Category Archives: USPTO

SUPREME COURT HOLDS THAT AIA ON-SALE BAR APPLIED TO SECRET SALES

By Reza Mollaaghababa In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Appeals, Court of Appeals Fed Circuit, Covered Business Methods, Federal Circuit, Inter Partes Review, Lack of Written Description, On-Sale BAR, One-year Statutory Bar, Patent Eligible Subject Matter, Post Grant Review, Printed Matter Doctrine, PTAB Procedure, PTAB Trial Practice Guide, Supreme Court, Trial Tactics, USPTO | Tagged , , , , , ,

YEAR IN REVIEW: CHANGES IN PTAB PRACTICE IN 2018

By Tom Engellenner A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law … Continue reading

Posted in Amendments before the PTAB, Broadest Reasonable Interpretation, Enlarged PTAB Panels, Inter Partes Review, Phillips standard, Post Grant Review, PTAB Procedure, PTAB Trial Practice Guide, Sovereign Immunity, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , ,

PTAB Abandons its Practice of Broadly Interpreting Claims of Challenged Patents in favor of Phillips Standard of “Ordinary and Customary Meaning”

By Tom Engellenner In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) … Continue reading

Posted in BRI Standard, Broadest Reasonable Interpretation, Claim Construction, Covered Business Methods, Inter Partes Review, Phillips standard, Post Grant Review, Trial Tactics, USPTO | Tagged , , , , , , , , , ,

Attorney General’s Office May Weigh In on Constitutionality of IPRs involving Pre-AIA Patents

By Tom Engellenner The 2011 America Invents Act (AIA) provided a variety of new ways to administratively challenge patents, including the now widely used inter partes review (“IPR”) procedure.  In two recent appeals of IPR decisions, Genentech has challenged the … Continue reading

Posted in Appeals, Attorney General, Constitutionality, Court of Appeals Fed Circuit, Federal Circuit, Fifth Amendment, Final PTAB Decision, Supreme Court, Takings Clause, USPTO | Tagged , , , , , , , , , , , , ,

CAFC Affirms PTAB’s Decision That Printed Matter Doctrine Can Be Used In Claim Construction

By Reza Mollaaghababa In an inter partes review proceeding, a challenger cannot raise patent-eligibility as a ground of invalidity.  Rather, the invalidity grounds are limited to lack of novelty and obviousness.  Notwithstanding, in construing claim terms, the PTAB can decide … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Appeals, Claim Construction, Court of Appeals Fed Circuit, Federal Circuit, Mental Steps Doctrine, Patent Eligible Subject Matter, Printed Matter Doctrine, USPTO | Tagged , , , , , , , , ,