In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that an IPR final written decision must address every challenged claim. The PTAB responded by issuing amended Institution Decisions, adding all non-instituted grounds to pending proceedings. See, e.g., Unified Patents, Inc. v. Collision Avoidance Technologies, Inc., Case IPR2017-01355 (PTAB) (Paper 18). […]
The Patent Trial and Appeal Board has long been hesitant in granting motions to amend. But a recent review of motion to amend statistics shows that they are being granted with greater frequency — with a notable uptick since February. https://www.kilpatricktownsend.com/en/Insights/Publications/2018/6/An-Uptick-In-PTABs-Motion-To-Amend-Grant-Rate
Consistent with Director Iancu’s goal of providing greater predictability and certainty in the US patent system, the US Patent and Trademark Office (USPTO) on Tuesday proposed a new rule to change the standard for claim construction in post-grant Patent Trial and Appeal Board (PTAB) proceedings from the “broadest reasonable interpretation” to the narrower Phillips[i] “ordinary […]
The PTAB has declined to institute proceedings on challenged claims on the basis that one or more of the challenged claims is indefinite. See, e.g., IPR2015-00662, IPR2013-00036. While this may seem like a positive outcome for a Petitioner, the finding does not have the force of law, and the patent is still valid and enforceable. […]
Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based on prior art that was raised or could have been raised. See 37 CFR […]
In a recent Northern District of California case, the Court granted a restraining order requiring the defendant to dismiss a set of PTAB petitions. Dodocase VR, Inc. v. Merchsource, LLC, et al., No. 17-cv-07088-EDL (N.D. Cal.). The defendant previously licensed the challenged patents, and the license agreement contained a no-challenge provision and a forum selection […]
Our post-grant proceedings attorneys combine the technical and procedural skills of our renowned patent prosecution and litigation practices. Click below to view members of our Post-Grant Team.
Our goal is to keep our clients up to date on the latest practice tips. Since its enactment in 2011, the American Invents Act and its implications have changed for practitioners and set up new challenges. Click below for our latest post-grant proceedings practice tips and resources.