post grant procedures

01 Nov: Other Barks & Bites for Friday, November 1: CAFC Arthrex Decision Makes PTAB Judges Inferior Officers, USPTO Seeks Comments on IP Protections for AI Inventions and Reports to Congress on SUCCESS Act

This week in Other Barks & Bites: the Federal Circuit hands out three precedential decisions; the USPTO sends its SUCCESS Act Report to Congress; the Copyright Royalty Board proposes royalty rates on ephemeral recordings for certain Internet trans…

31 Oct: Federal Circuit Says PTAB Judges Are Not Constitutionally Appointed

The U.S. Court of Appeals for the Federal Circuit, in an opinion authored by Judge Moore, has ruled that the current statutory scheme for appointing Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) violates the Appointmen…

31 Oct: Panelists Warn Senate IP Subcommittee Against Drastic Measures on Patent Quality

The Senate Judiciary Committee’s Subcommittee on Intellectual Property, headed by Senator Thom Tillis (R-NC), yesterday heard from five witnesses on ways to improve patent quality at the U.S. Patent and Trademark Office (USPTO). Suggestions ranged from…

29 Oct: Trading Technologies, ChargePoint Ask High Court for Help with Federal Circuit’s Conflicted Approach to Patent Eligibility

Trading Technologies International, Inc. (TT) has filed a second petition with the U.S. Supreme Court asking it to review a Federal Circuit holding that computer-implemented inventions that do not improve the basic functions of the computer itself are …

29 Oct: How Businesses Can Prepare for ITC Exclusion Orders: Section 337 Investigations on the Rise

Patent investigations at the International Trade Commission (ITC) have been on an upward trend in the last few years. In 2018, the most recent year with complete data, 74 new complaints were filed and there were 130 active investigations, compared to t…

23 Oct: PTAB Issues First Motion to Amend Guidance, Samsung Petitions for IPR Granted Despite NuCurrent Issue Preclusion Defense

The Patent Trial and Appeal Board (PTAB) recently issued its first-ever preliminary guidance on motions to amend claims filed by patent owner Sanofi and, although the substituted claims haven’t escaped an obviousness challenge from Mylan, patent owners…

21 Oct: Petition Seeks Rare En Banc Review to Clarify Whether PTAB Can Overrule Article III Courts

Chrimar Systems, Inc. filed a petition for en banc rehearing with the Federal Circuit on October 21 asking it to review the so-called Fresenius-Simmons preclusion principle. The petition has a high hurdle to meet, as the underlying Federal Circuit deci…

02 Apr: Request for Amici: Tell the Supreme Court to Clarify Section 101

On March 8, Foster Pepper filed a petition for certiorari with the Supreme Court, case number 18-1199, challenging the Federal Circuit’s emerging “physical realm” test as part of its Alice/Section 101 analysis. Amicus briefs in support of our cert peti…

24 Mar: What the PTAB’s Precedential Decisions on Live Testimony and Substitute Claims Mean for PTAB Litigation

On Monday, March 18, 2019, the Patent Trial and Appeal Board (PTAB) designated three decisions as precedential. Two of the three decisions—K40 Electronics LLC v. Escort Inc. (“K40 Electronics”),[AIA, live testimony at oral argument] and DePuy Synthes P…