Category Archives: USPTO

USPTO Proposes Change In Claim Construction Standard For Post-Grant Proceedings

By Reza Mollaaghababa On May 9, 2018, U.S. Patent and Trademark Office (PTO) issued a notice of proposed rule for changing the standard for construing claims in unexpired patents in inter partes review (IPR), post-grant review (PGR), and transitional covered … Continue reading

Posted in BRI Standard, Broadest Reasonable Interpretation, Claim Construction, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure, USPTO | Tagged , , , , , , , , , , , ,

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 … Continue reading

Posted in America Invents Act, Appeals, Court of Appeals Fed Circuit, Federal Circuit, Final PTAB Decision, Instittion Decision, Inter Partes Review, Post Grant Review, PTAB Procedure, Stays, Supreme Court, Trial Tactics, USPTO | Tagged , , , , , , , , , ,

SCOTUS Holds Inter Partes Review Proceedings Valid In “Narrow” Decision

By Aparna Nemlekar This week the Supreme Court of the United States (“Supreme Court”), in a 7-2 decision, held that inter partes review (“IPR”) proceedings conducted by the Patent Trial and Appeal Board (PTAB) do not violate Article III or … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Constitutionality, Supreme Court, USPTO | Tagged , , , , , ,

CAFC Affirms PTAB’s Decision To Invalidate Cialis and Adcirca Patents

By Reza Mollaaghababa In a recent decision, the Court of Appeals for the Federal Circuit (CAFC) affirmed decisions in two inter-partes review (IPR) proceedings that patents owned by ICOS Corporation directed to tadalafil formulations (used in the erectile dysfunction drug, … Continue reading

Posted in Anticipation/Obvious, Court of Appeals Fed Circuit, Federal Circuit, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics, USPTO | Tagged , , , , , , , ,

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 … Continue reading

Posted in America Invents Act, Derivation Proceedings, Instittion Decision, Trial Tactics, USPTO | Tagged , , , ,