AIA Blogs

  • PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference
    Wednesday, January 15, 2020

    The Patent Trial and Appeal Board’s Precedential Opinion Panel (“POP”), in its recent decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019), set out to answer the question: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” […]

  • Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed “Principal” Officers
    Wednesday, November 6, 2019

    On October 31, 2019, the U.S. Court of Appeals for the Federal Circuit ruled in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, that the U.S. Secretary of Commerce’s practice of appointing Administrative Patent Judges (“APJs”), as set forth in Title 35, is unconstitutional for failure to comply with the Appointments Clause of the […]

  • USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings
    Monday, November 4, 2019

    On October 22, 2019, the United States Patent and Trademark Office (“USPTO”) proposed changes to the rules of practice for amending patents in AIA trial proceedings before the Patent Trial and Appeal Board (“PTAB”). The changes would apply to inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent review (“CBM”). The rules […]

  • New Pilot Program Concerning Motions To Amend
    Monday, March 25, 2019

    On March 15, 2019, the USPTO published a final pilot program for motions to amend (MTA) in AIA trial proceedings in the Federal Register. 84 Fed. Reg. 9497-9507 (Mar. 15, 2019). This pilot program applies to all AIA trial proceedings instituted on or after March 15, 2019; and does not extend the statutory requirement that trials [...]

  • Federal Circuit Rules that Assignor Estoppel Does Not Apply to IPR Petitions
    Thursday, December 6, 2018

    Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 2017-1525 (Fed. Cir. Nov. 9, 2018) The Federal Circuit recently ruled that a petition for inter partes review is not barred by assignor estoppel when the petitioner is in privity with a co-inventor who had assigned his rights to the current patent owner. The court adopted [...]

  • Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings
    Thursday, November 1, 2018

    Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018) The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The [...]

  • PTAB Releases Revised AIA Trial Guide
    Tuesday, August 14, 2018

    The USPTO Patent Trial and Appeal Board has issued a revised AIA Trial Practice Guide, updating the original guide published in 2012. The revised TPG, which was published in the Federal Register on August 13, 2018, provides updated guidance on practice and procedure before the PTAB in inter partes review, post grant review, and covered [...]

  • Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings
    Monday, July 23, 2018

    Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings In a closely-watched case, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO’s Patent Trial and Appeal Board and held that tribal sovereign immunity does not apply to inter partes review proceedings under the America Invents [...]

  • PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues
    Tuesday, January 16, 2018

    The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, [...]

  • PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision
    Monday, December 4, 2017

    In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d [...]