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Tag Archives: PTAB

US – Patent IPRs: Sovereign immunity defence heading on up?

In this post, we discuss the sovereign immunity defence for IPRs which has garnered much attention, with the final chapter likely ending up at SCOTUS. The article was first published in Intellectual Property Magazine, April 2018. Summary So how does the sovereign immunity saga end? The PTAB and Congress have already made their scepticism of tribal

US: PTAB – What’s in store for the rest of the year?

In this post we examine how Section 101, IPRs and sovereign immunity defences are set to shape the board’s procedures and strategies over the coming months. The article was first published in Intellectual Property Magazine, March 2018. Before projecting the future, it is important to reflect on the past. The US Patent Trial and Appeal Board (PTAB)

ITC Section 337 Investigations Webinar – Recording

On 1 March we held our first webinar in the LimeGreen Live series which focussed on International Trade Commission (ITC) Section 337 Investigations. The webinar was a panel discussion with former ITC Administrative Law Judge, Theodore Essex, Head of Hogan Lovells IP, Media & Technology Americas Practice, Celine Crowson, and former ITC Trial Lawyers Association President, Tony Pezzano. The panel provides background

LimeGreen Live: ITC Section 337 Investigations Webinar – 1 March

Join us for the first webinar in the LimeGreen Live series which will focus on the International Trade Commission (ITC) Section 337 Investigations. The webinar will include a panel discussion with former ITC Administrative Law Judge, Theodore Essex, Head of Hogan Lovells IP, Media & Technology Americas Practice, Celine Crowson, and former ITC Trial Lawyers Association President, Tony Pezzano. The panel

US: Supreme Court hears argument on constitutionality of inter partes review

On November 27, 2017, the Supreme Court heard oral arguments in a case that will determine the constitutionality of inter partes review, a proceeding before the United States Patent and Trademark Office’s Patent Trial and Appeals Board that allows third parties, including alleged infringers, to challenge the validity of issued patents.  As previously reported by

US: Supreme Court takes up constitutionality of inter partes review

On June 12, 2017, the Supreme Court granted certiorari to decide the constitutionality of inter partes review, a proceeding before the Patent Trial and Appeals Board (PTAB) that allows third parties, typically alleged infringers, to challenge the validity of issued patents.  The question presented in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

USPTO issues new rules for post-grant proceedings effective May 2

The U.S. Patent and Trademark Office (“PTO”) issued amendments to its “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings, which will be effective in all current and future proceedings starting on May 2, 2016. Most notably, these amendments allow a patent owner to submit testimonial

US: A partial victory for business method patents at the PTAB

The U.S. Patent Trial and Appeal Board (PTAB) recently found a business method patent eligible under 35 U.S.C. § 101, in one of the first such decisions since the institution of Covered Business Method (CBM) Patent Reviews and the Supreme Court’s decision in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347

US: Federal Circuit agrees PTAB can “pick and choose”

On February 10, 2016, in a 2-to-1 decision, the Federal Circuit upheld the Patent Trial & Appeal Board’s (the “PTAB’s”) policy of conducting partial reviews of patents challenged under inter partes review petitions. In Synopsys, Inc. v. Mentor Graphics Corp., the Court found no statutory requirement that the PTAB’s final written decision must address every

US – Supreme Court to review PTAB claim construction standard

On January 15, 2016, the U.S. Supreme Court decided to review whether the Patent Trial & Appeal Board (“PTAB”) has been using the correct standard to construe patent claims in post-grant proceedings. The PTAB construes claims according to their “broadest reasonable interpretation” (“BRI”). By contrast, the claim construction standard applied by district courts follows Federal

US: Pharma-friendly trends at USPTO and PTAB

Recent USPTO activity may signal a shift in treatment of pharmaceutical patents in AIA proceedings. The America Invents Act (“AIA”) provides for adversarial proceedings for challenging patents in the United States Patent and Trademark Office (“USPTO”) — including inter partes review (“IPR”) and post grant review (“PGR”) — which are faster, cheaper, and have a lower

U.S. – Claim construction at the PTAB is under review

Claim construction is at the heart of nearly every patent litigation and the new post-grant procedures at the U.S.P.T.O. are no different.  The claim construction standard used by the Patent Trial and Appeal Board (“PTAB”) at the PTO during an inter partes review (“IPR”) is currently being challenged before the United States Court of Appeals