AIA Blogs

  • 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 […]

  • 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 [...]