The U.S. District Court for the District of Massachusetts recently found  that the scope of inter partes review estoppel was limited to only those grounds specifically instituted in an IPR proceeding, applying the standard set forth by the Federal Circuit in Shaw . Following a final written decision invalidating some, but not all, asserted […]
The Patent Trial and Appeal Board has issued its Guidance on Motions to Amend in view of the Federal Circuit’s long-awaited Aqua Products decision. In that splintered ruling, the Federal Circuit addressed the burden of proof as to the patentability of substitute claims presented by a patent owner in a motion to amend during inter […]
The Supreme Court held oral argument Monday, November 27, in the case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al. to address the question of whether inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) violate the Constitution. Justice Ginsburg lead the discussion by observing “there […]
The Patent Trial and Appeal Board (“PTAB”) recently issued a Standard Operating Procedure (“SOP”) for remands from the Federal Circuit. Remands of America Invents Act trials (IPR, CBM, and PGR) and ex parte and reexamination appeals are all included within the scope of the procedures. The SOP establishes a goal of issuing decisions on remanded […]
On November 27, the Supreme Court will hear arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. The issue is: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a […]
The full U.S. Court of Appeals for the Federal Circuit held in Aqua Products “the burden of proving the unpatentability of all claims in an IPR—both original and amended—is on the petitioner.” Five opinions (including one dissent written by Judge Hughes) were filed by the full bench, and the lead opinion written by Judge O’Malley […]
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