The PTAB designated as precedential a recent order regarding Motions to Amend. Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) (Designated Precedential: Mar. 7, 2019). The order sets out the requirements and burden for motions to amend under 35 U.S.C. § 316(d). Notably, Scott Boalick, acting Chief Administrative Patent Judge, […]
In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged by the petitioners. In an opinion written by Justice Gorsuch, the Court explained that the language of the […]
The Federal Circuit on Nov. 9, 2018 held that assignor estoppel does not apply to IPRs: Arista Networks, Inc. v. Cisco Sys., Inc., No 17-1725, slip. Op. at 17-23 (Fed. Cir. Nov. 9, 2018.) The Court held: “We conclude that Section 311(a) [of the Patent Act], by allowing a ‘person who is not the owner […]
Earlier today, the United States Patent & Trademark Office published its final rule package changing the claim construction standard used in AIA trials, replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the narrower Phillips standard, traditionally used in district court litigation and in investigations before the International Trade Commission (“ITC”). The new claim […]
Today, the Federal Circuit issued an en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset the clock for determining whether the Petition was “filed more than 1 year after the date on which the petitioner […]
The Federal Circuit determined in an opinion last week that tribal sovereign immunity does not apply in an inter partes review (IPR) challenge to patent validity. Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. (July 20, 2018). The dispute began when Allergan asserted patents related to RESTASIS® treatment for dry eye against a number of […]
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