SAS Institute Decision Causes Turmoil At The PTAB

By Tom Engellenner The U.S. Supreme Court’s decision this week in SAS Institute v. Iancu has upended a major provision of the U.S. Patent and Trademark Office (PTO) regulations for inter partes and post grant review proceedings conducted by its Patent Trial and Appeal Board (PTAB).  By concluding in a 5-4 decision that the agency … Continue reading SAS Institute Decision Causes Turmoil At The PTAB

First AIA Derivation Trial Instituted by PTAB

By Aparna Nemlekar On March 21, 2018, the Patent Trial and Appeal Board (“PTAB”) instituted the first AIA derivation proceeding to determine whether patent claims to a window frame component should be canceled because they were derived from others not listed as inventors. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to … Continue reading First AIA Derivation Trial Instituted by PTAB

PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

By Tom Engellenner In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied, at least in part, on new evidence introduced by the petitioner in its reply brief. … Continue reading PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

IPR Estoppel Provisions May Not Be That Scary After All

By Yue (Joy) Wang IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic.   Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped from presenting invalidity grounds at trial that it did not raise in an earlier IPR. … Continue reading IPR Estoppel Provisions May Not Be That Scary After All