Resources

Publications

Publications

5/7/2018
Federal Circuit No. 2016-2309
5/7/2018
Federal Circuit No. 2017-1355
4/30/2018
The assignment of effective control over the scope of trials before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (“Office”) under the America Invents Act of 2012 (AIA) has been an area of controversy since implementation of the Act.  In SAS Institute Inc. v. Iancu, the question of control arose in the context of 35 U.S.C. § 318(a), and whether that provision requires the PTAB to issue a final written decision on all claims challenged by the petitioner in an inter partes review, allowing the scope of the petition to “guide the life of the litigation,” or instead permitted the Board to follow a practice, ostensibly authorized under Office rules, of instituting review as to only some claims challenged in the petition, and denying review as to the remaining claims.1
4/9/2018
Federal Circuit No. 2017-1437 & 2017-1494
4/2/2018
Federal Circuit No. 2017-1445
4/2/2018
Federal Circuit No. 2014-1469, 2014-1504
3/14/2018
Federal Circuit No. 2016-2684
3/14/2018
Federal Circuit No. 2016-2520
3/1/2018
US patents have been challenged by inter partes review (IPR) at the US Patent Trial and Appeal Board (PTAB) at an increasing rate since their creation by the America Invents Act in 2011. Patent owners often point to the ‘commercial success’ of the products covered by their patent as an indication that their patent is non-obvious. Non-obviousness is a legal requirement for the patent owner to maintain its patent rights. The showing of ‘commercial success’ to fight off a challenger’s claim of patent invalidity is an approach that has been taken by patentees for decades in district court litigations.
2/23/2018
To request cancellation of one or more claims of a patent in an inter partes review (IPR), a petitioner must challenge the claim on the basis that the claim is unpatentable under 35 U.S.C §102 or 103, in view of prior art patents or printed publications. 35 U.S.C. § 311(b).  Two ways a patent owner can disqualify references relied upon by the petitioner for unpatentability are by (i) asserting that the petitioner did not set forth sufficient evidence showing that the reference qualifies as a printed publication, or (ii) antedating the reference to show that the date of invention is prior to the critical date of the reference.