AIA Blogs

  • Arthrex Confirms the Director’s Authority to Take Control of a PTAB Proceeding
    Friday, June 25, 2021

    On Monday, the Supreme Court decided United States v. Arthrex, Inc., and ruled on the long-anticipated question of whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive branch is consistent with the Appointment clause of the Constitution. The Court held that “the unreviewable authority wielded by APJs during […]

  • PTAB Designates Two Decisions Examining Fintiv Factors as Precedential
    Tuesday, December 22, 2020

    The Patent Trial and Appeal Board (“PTAB”) recently designated as precedential two decisions that apply the Fintiv factors when determining whether to institute an inter partes review (IPR) of a patent involved in parallel U.S. District Court litigation: Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (PTAB October 21, 2020)(precedential, designated December 17, 2020); […]

  • Federal Circuit Rules that PTAB May Not Cancel “Challenged” Claims for Indefiniteness in an IPR Proceeding
    Friday, February 21, 2020

    On February 4, 2020, the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) ruled that the Patent Trial and Appeal Board (the “PTAB”) may not cancel “challenged” claims for indefiniteness in an inter partes review (IPR) proceeding, but may review them for novelty or nonobviousness. Samsung Elecs. Am., Inc. v. Prisua Eng’g […]

  • 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 […]