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News and Analysis

  • Federal Circuit en banc considers motions to amend in Aqua Products

    December 20, 2016

    During oral arguments for In re: Aqua Products, the Federal Circuit sitting en banc considered the burden of proof in motions to amend before the PTAB. Natalie Rahhal analyses the likely outcomes when the appeals court issues its decision in the case

  • Interview: Randi Karpinia, Meg Boulware and the AIPLA Women in IP Law Committee

    December 02, 2016

    The chair of AIPLA’s Women in IP Law Committee and the co-chair of the Advancement and Retention Subcommittee tell Natalie Rahhal how they promote retaining and advancing women

  • Analysing the Federal Circuit’s Unwired Planet ruling on CBMs at the PTAB

    November 28, 2016

    The Federal Circuit’s Unwired Planet v Google decision will lead to more rigorous review of covered business method review petitions by the Patent Trial and Appeal Board and discourage filing

  • China drives growth in IP filings - WIPO's latest report in numbers

    November 23, 2016

    WIPO has published its annual World Intellectual Property Indicators (WIPI) report with global data on patent, trade mark and design filings in 2015. Here are the key figures at a glance

  • USPTO could change direction under Trump administration – panel

    November 21, 2016

    A panel on the US election at the IP Dealmakers Forum speculated that the Trump administration may take a long time to appoint a USPTO director and the Republican leadership that worked on patent bills in the previous Congress will again push for reform

  • PTAB Bar Association enjoying fast growth

    November 07, 2016

    The PTAB Bar Association has added more members and attracted more seed funding since it was announced in September. Managing IP talks to the association’s president-elect Erika Arner and vice-president Naveen Modi about its goals

  • October PTAB round-up: Filing holds up, CAFC IPR reviewability decisions, fee and patent agent privilege changes

    November 04, 2016

    The past four months have been stable for Patent Trial and Appeal Board filings, while October saw the Federal Circuit giving another ruling on reviewability of IPR institution in Medtronic, the PTAB issue Kyle Bass and printed publication decisions, and the USPTO propose fee increases and changes to patent agent privilege

  • How to impress PTAB judges

    October 31, 2016

    Patent Trial and Appeal Board judges gave tips on how to get the best results from AIA trial hearings

  • The PTAB comes of age

    October 28, 2016

    In a wide-ranging interview during yesterday's AIPLA Annual Meeting luncheon, Chief Judge David Ruschke of the Patent Trial and Appeal Board revealed his hopes for his tenure. Ruschke started in the role in May

  • Making a better patent

    October 27, 2016

    Patent prosecution is taking place against a backdrop of the press claiming many patents should not have been issued, allegations that patent examiners shirk their responsibilities and the technology industry being exasperated by the Alice aftermath

  • Lee defends USPTO against accusations of examiners billing unworked hours

    September 14, 2016

    Michelle Lee has testified before a House of Representatives committee amid accusations of USPTO examiners claiming unsupported hours. Managing IP spoke to POPA and patent practitioners to put the problem into perspective

  • Federal Circuit rules software patents valid in McRO v Bandai Namco

    September 14, 2016

    The Federal Circuit has provided guidance on Section 101 while finding software patents valid for only the fourth time since Alice v CLS

  • The Mad Men of IP

    August 24, 2016

    In the early 1960s, patent practice was quiet and inventors often faced a hostile environment. But then, like now, new technologies were emerging to reshape business and the economy. Across North America, innovative lawyers set up boutique firms that would transform the market, many of which still exist today. Fifty years on, Jakob Schnaidt tells their story

  • July CBM petition filing slumps to lowest level since February 2013

    August 03, 2016

    PTAB Monthly Data and Analysis: July was the second-busiest month of 2016 for petition filing, but covered business method petitions fell to the lowest level since February 2013. Recent decisions from the Board include cancelling claims on a patent that had been used to sue more than 250 defendants

  • Latest people moves in the US

    July 27, 2016

    Managing IP’s regular review of the latest appointments, including Cooley hiring a team of Morrison & Foerster lawyers in California, James Pooley joining Orrick, a new Librarian of Congress, and hires by Milbank Tweed Hadley & McCloy, K&L Gates, Barnes & Thornburg and Paul Hastings

  • USPTO issues memorandum in response to CellzDirect and Sequenom

    July 21, 2016

    The USPTO tells examiners the Federal Circuit’s CellzDirect ruling “highlighted several important points” but says its subject matter eligibility guidance and training examples are already consistent with it

  • Federal Circuit remands PTAB for changing theories in midstream

    June 16, 2016

    The Federal Circuit’s ruling in SAS Institute v ComplementSoft that the Patent Trial and Appeal Board was wrong to use a new claim construction without giving parties a chance to respond will have a big impact on trial and appeal practice, believe practitioners

  • Kyle Bass IPRs end up with 57% institution success rate

    June 13, 2016

    The Patent Trial and Appeal Board’s institution decisions on all 35 of the inter partes review petitions filed by Kyle Bass and Erich Spangenberg are now in

  • PTAB passes 5,000 petition mark but 2016 filing lagging last year

    June 03, 2016

    PTAB Monthly Data: Ford filed the most PTAB petitions in May, with Versata the most-targeted patent owner. Four PGR petitions were filed, a sign that this type of petition is gaining traction

  • PTAB designates five decisions as precedential

    May 19, 2016

    A total of eight Patent Trial and Appeal Board decisions have now been designated precedential. At the PTAB Forum 2016, acting PTAB chief judge Nathan Kelley provided detail on the process of approving precedential decisions

  • Medtronic’s David Ruschke appointed PTAB chief judge

    May 11, 2016

    The USPTO has announced a new chief judge of the Patent Trial and Appeal Board, after 10 months of Nathan Kelley serving as acting chief judge

  • Analysing PTAB first-quarter petitions – filing falls to a two-year low

    April 19, 2016

    Managing IP crunches the data to reveal the busiest petitioners, patent owners, law firms, and attorneys at the Patent Trial and Appeal Board in the first three months of 2016. The quarter included some interesting petitions such as the first IPR challenging an Apple patent

  • Data: PTAB filing drops in March

    April 19, 2016

    The number of petitions filed at the Patent Trial and Appeal Board in March was down on the previous month. So far this USPTO fiscal year, the percentage of challenges to mechanical/business method and bio/pharma patents has increased

  • Analysing the PTAB’s final rule changes

    April 05, 2016

    The final rule changes to Patent Trial and Appeal Board proceedings will likely help to reduce the rate of institution of trials, especially allowing patent owners to include relevant testimonial evidence in preliminary responses. There was one surprise, however, with the USPTO dropping a proposed pilot programme

  • Horacio Gutierrez takes Spotify role, and other US people moves

    March 22, 2016

    In our regular round-up, we summarise recently-announced partner and other moves in the Americas, including hires by BakerHostetler, Morrison & Foerster, Proskauer, Choate Hall & Stewart, Venable, and Morgan Lewis

  • Managing IP North America Awards 2016: The winners

    March 18, 2016

    The winners of Managing IP’s North America Awards 2016 were revealed on March 17 at a dinner at the Four Seasons in Washington DC, recognising the best intellectual property law firms, individuals and cases of the past year

  • Data: Top petitioners, patent owners, law firms and attorneys at the PTAB in 2015

    February 29, 2016

    Figures from Docket Navigator reveal that Apple remained by far the biggest filer of PTAB petitions in 2015 while Innovative Display Technologies was the top patent owner

  • Managing IP North America awards 2016 – shortlists

    February 02, 2016

    Shortlists for this year’s Managing IP North America awards have been announced. The outstanding firms and individuals in US and Canadian intellectual property will be announced during a dinner at the Four Seasons Hotel in Washington DC on March 17

  • US patent grants fall for first time since 2007

    January 13, 2016

    IBM remained the top US patent recipient in 2015, but it was the first year since 2007 in which overall patent activity fell, according to analysis released by IFI Claims Patent Services. IFI also identified an increasing trend of companies choosing to spread their portfolios across multiple entities

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