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PTAB news and analysis

  • Rankings: The top PTAB petitioners, patent owners and law firms in 2018

    January 17, 2019

    Managing IP reveals rankings for Patent Trial and Appeal Board filing last year. Apple regained the top petitioner status, Qualcomm was the top patent owner and Fish & Richardson remained the law firm involved in the most disputes

  • PGR popularity tipped to soar among US biosimilar makers

    January 07, 2019

    In-house counsel say they’re ready to embrace post-grant reviews as a new wave of biologic patents filed after 2012 surges towards the industry

  • 2018 US patent cases down 41% from 2015; PTAB filing lowest since 2014

    January 04, 2019

    The decrease in district court patent cases was proportionally smaller last year than the year before, suggesting the volume of new patent disputes is levelling out

  • PTAB round-up: Filing surges ahead of rule change, POP takes up first case

    December 10, 2018

    November’s 230 petitions filed at the Patent Trial and Appeal Board was the highest monthly figure since January 2017, while the newly-formed Precedential Opinion Panel will address issue joinder

  • Andrei Iancu interview: A change in tone at the USPTO

    November 28, 2018

    Andrei Iancu is one of our 50 Most Influential People in IP. He has changed the mood at the USPTO since taking over as director – and he’s not done yet

  • PTAB rankings: Top petitioners, patent owners and law firms in first nine months

    November 02, 2018

    Apple was the top petitioner, Qualcomm was the most-challenged patent owner and Fish & Richardson was the law firm involved in the most PTAB disputes filed in the first nine months of the year, according to data revealed by Managing IP

  • PTAB judges provide pointers on claim construction standard change

    October 30, 2018

    The PTAB acting chief judge and vice-chief judge advised to inform them if there has been a final claim construction determination in another forum, and revealed another update to the Trial Practice Guide will be coming in the next few months

  • Is the Federal Circuit at saturation point for patents?

    October 27, 2018

    “There is no realistic way to say we are a generalist court at this point,” Judge Chen said at a conference, while noting that the Federal Circuit is “more and more of a patent validity court”

  • USPTO announces new PTAB claim amendment procedure

    October 26, 2018

    “I believe that the current amendment process in AIA proceedings is not working as intended,” said Andrei Iancu, announcing a new procedure at the AIPLA Annual Meeting

  • Data: PTAB filing in Q3 highest since Q2 2017

    October 16, 2018

    2018 is on course to have the lowest petition filing rate since 2013. The third quarter included the impact of SAS on institution decisions, an update to the AIA Trial Practice Guide, the departure of the PTAB chief judge and the creation of a Precedential Opinion Panel

  • USPTO issues PTAB claim construction final rule

    October 10, 2018

    The final rule changes the claim construction standard used by the PTAB to the Phillips standard used in district courts. Practitioners predict a surge in filing before it becomes effective in November

  • New PTAB Precedential Opinion Panel expected to result in more designations

    September 20, 2018

    The Patent Trial and Appeal Board has revised its standard operating procedures on panelling of matters and precedential and informative decisions

  • The PTAB cases to watch for the rest of 2018

    September 19, 2018

    Important pending Patent Trial and Appeal Board cases relate to issues ranging from assignor estoppel to the constitutionality of PTAB judges’ appointments

  • Federal Circuit backs Broad Institute in CRISPR patent dispute

    September 10, 2018

    In a closely-watched CRISPR patent case, the Federal Circuit says the PTAB did not err in concluding that Broad Institute’s claims would not have been obvious over the University of California’s claims

  • Ruschke leaves “big shoes to fill” for next PTAB chief judge

    September 10, 2018

    Who will the PTAB’s new chief judge be, and what challenges will they face? Living up to Ruschke’s legacy is only the first hurdle

  • En banc Federal Circuit rules on PTAB time bar in Click-To-Call opinion

    August 17, 2018

    Court says the PTAB was wrong to decide that voluntary dismissal without prejudice of a civil action in which the complaint was served “does not trigger” the one-year time bar under Section 315(b)

  • PTAB chief judge takes new USPTO role as senior advisor to patents

    August 16, 2018

    David Ruschke, who has been Patent Trial and Appeal Board chief judge since 2016, has been given a role intended to improve the free flow between the Patents and PTAB business units at the USPTO

  • USPTO proposes 25% PTAB fee increase in response to SAS

    August 15, 2018

    The USPTO is seeking across-the-board fee increases, as well as a new fee surcharge for filing in a non-DOCX format and an annual active patent practitioner fee

  • PTAB introduces surprise patent owner sur-reply in practice guide update

    August 15, 2018

    AIA Trial Practice Guide changes attracting the most attention are patent owners getting sur-replies and the opportunity to present a brief sur-rebuttal at the oral hearing, giving them the final word in PTAB proceedings

  • PTAB H1 filing rankings: the top petitioners, patent owners and law firms

    August 06, 2018

    Apple tops – while Google, LG Electronics and Intel climb – the petitioner rankings in the first half. Fundamental Innovation Systems is most targeted patent owner, Fish & Richardson is the top petitioner law firm and Irell & Manella is the top patent owner law firm

  • The month at the PTAB: filing falls, sovereign immunity and RPI rulings, printed publication issues

    August 03, 2018

    July included 127 petitions filed, the Federal Circuit making it harder for RPX and Unified Patents to file IPRs, and two noteworthy decisions on public accessibility

  • PTAB institution rate fell in two months after SAS ruling

    August 02, 2018

    The Patent Trial and Appeal Board’s institution rate was 58.4% in the first two calendar months after the Supreme Court ended the practice of partial institution – down from the 2018 fiscal year rate of 62% up to the end of April

  • No tribal sovereign immunity at PTAB – what about state immunity?

    July 30, 2018

    The Federal Circuit’s reasoning in finding that tribal sovereign immunity cannot be asserted in IPRs may be used to argue the same for state universities seeking immunity from the PTAB

  • PTAB unduly restrictive in real party in interest analysis: Federal Circuit

    July 26, 2018

    The Federal Circuit has ruled the Patent Trial and Appeal Board takes too narrow a view in real party in interest disputes, in Applications in Internet Time v RPX

  • Federal Circuit affirms tribal sovereign immunity cannot be asserted in IPRs

    July 20, 2018

    Allergan is not protected from PTAB review by the Saint Regis Mohawk Tribe’s sovereign immunity, says the appeals court in a ruling that relies on the Supreme Court’s FMC opinion

  • Analysis: Section 101’s power wanes post-Berkheimer

    July 18, 2018

    New data reveals that findings of invalidity and the success of 101-based motions to dismiss have dropped since Berkheimer, the most important US subject matter eligibility case of 2018

  • SAS appeal – how the Federal Circuit has interpreted PTAB cases since Supreme Court ruling

    July 12, 2018

    Managing IP assesses how the Federal Circuit has responded to SAS Institute v Iancu in appeals from the Patent Trial and Appeal Board

  • PTAB designates five informative decisions

    July 12, 2018

    The Patent Trial and Appeal Board has designated five decisions as informative, two ex parte review and three inter partes review decisions

  • PTAB round-up: Filing rebounds in first half; two bills introduced in Congress

    July 12, 2018

    June included an increase in Patent Trial and Appeal Board petition filing, two PTAB-related bills being introduced in Congress and the first reversal of a PGR final written decision

  • PTAB post-SAS: what we know and what questions remain

    June 19, 2018

    The big questions remaining after the Supreme Court’s SAS ruling include how institution rates will change, how strategy at the Board should evolve and how district courts and the Federal Circuit will react. Michael Loney investigates

  • Generics would be shut out of PTAB under Hatch amendment

    June 21, 2018

    The Hatch-Waxman Integrity Act of 2018 would require a generic manufacturer wishing to challenge a brand-name drug patent to choose between Hatch-Waxman litigation and IPR, which one observer describes as a “Hobson’s choice”

  • May PTAB filing up, US district court patent case filing down

    June 08, 2018

    Post-Oil States PTAB filing increases while district court patent case filing slumps to lowest figure this year

  • PTAB answers frequently-asked SAS questions

    June 07, 2018

    Chief Judge Ruschke reveals 44% of pending cases were not instituted on all grounds and that the Board has already granted more than a dozen extensions to trials in response to SAS

  • PTAB designates amendment decision as informative, de-designates two others

    June 07, 2018

    The PTAB has de-designated Idle Free and Master Image in response to Aqua Products. Fiscal year 2018's first half set a motion to amend record for two consecutive quarters

  • How PTAB claim construction change will affect proceedings

    May 15, 2018

    Patent owners may not benefit from the proposed shift to the Phillips claim construction standard at the PTAB if it increases the chance of a stay and leads to a less nuanced Markman construction

  • Analysing the CRISPR arguments at the Federal Circuit

    May 08, 2018

    The UC v Broad Institute appeal hinges on whether the PTAB made any legal errors by deciding the case in favour of Broad without "substantial evidence", with observers believing an affirmance of the Board's ruling is most likely

  • USPTO releases guidance on SAS impact on PTAB proceedings

    April 27, 2018

    Guidance includes stipulating that for pending trials in which a panel has instituted only on some challenges in the petition, the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition

  • SCOTUS abolishes PTAB practice of partial claim review

    April 25, 2018

    The US Supreme Court has decided in SAS Institute v Iancu that the PTAB must review all or none of the challenged claims. Observers say the PTAB petitioners could react to the ruling in a number of ways, and it “may increase the number of issues that bubble up to the Federal Circuit”

  • Supreme Court finds IPRs constitutional, 7-2

    April 25, 2018

    The US Supreme Court has ruled the IPR process at the Patent Trial and Appeal Board is constitutional, although two justices dissented and the court left IPRs open to due process arguments

  • PTAB Q1 petitioner, patent owner and law firm rankings

    April 12, 2018

    Managing IP analyses Docket Navigator data on PTAB petitions filed in the first quarter of 2018 to reveal the most active entities and law firms

  • USPTO's Iancu: “Our patent system is at a crossroads”

    April 12, 2018

    Andrei Iancu has declared “we must change the dialogue surrounding patents”, and revealed the USPTO is looking to simplify the eligibility determination for its examiners and assessing PTAB issues such as how proceedings are instituted

  • PTAB round-up: quarterly filing rebounds; an end to BRI?; two informative decisions; first derivation trial instituted

    April 03, 2018

    Patent Trial & Appeal Board developments in March included the most post-grant review petitions filed in a month, a predicted switch to the Philips standard, two informative decisions involving 35 USC § 325(d), and the Board instituting trial to a derivation petition for the first time

  • PTAB institutes first derivation trial

    March 28, 2018

    The Patent Trial and Appeal Board has instituted a derivation trial for the first time, challenging a patent for a spacer frame used in insulated glass windows

  • PTAB round-up: top firms; February filing; sovereign immunity latest

    March 14, 2018

    Recent Patent Trial and Appeal Board developments include filing increasing in February, Managing IP revealing the top PTAB firms, the Board ruling tribal sovereign immunity doesn't apply in IPRs, and some interesting Federal Circuit opinions

  • This year’s top firms for patent work: IP STARS rankings

    March 04, 2018

    Following the publication of our trade mark rankings in the February issue, we now present the leading firms for patent work worldwide

  • PTAB rules sovereign immunity does not apply to IPRs

    February 26, 2018

    The PTAB has ruled that sovereign immunity does not apply in the case in which Allergan transferred patents to a Native American tribe, and says the proceedings can continue even without the tribe’s participation in view of Allergan’s retained ownership interests in the patents

  • Andrei Iancu is your new USPTO director – now what?

    February 09, 2018

    The new USPTO director has a number of issues to address such as subject matter eligibility and fee diversion. He will have a big influence at the PTAB, where the director has broad powers to set rules

  • Biopharma IPR filing at the PTAB smashes record in 2017

    February 08, 2018

    Group 1600 patent challenges at the Patent Trial and Appeal Board hit an all-time high last year, reveals a report from Fish & Richardson. This included a “dramatic increase” in IPRs challenging biologic drug patents

  • PTAB round-up: January filing, Wi-Fi One fallout, motion to amend study, informative decisions

    February 06, 2018

    Petition filing at the Patent Trial and Appeal Board was up slightly in January, while the Federal Circuit issued its en banc Wi-Fi One v Broadcom opinion and the Board released an updated motion to amend study and designated two decisions as informative

  • Data and analysis: Top parties in US district court and at the PTAB

    January 29, 2018

    Managing IP talks to patent litigators and PTAB practitioners to identify the most important trends and cases that will impact US patent disputes in 2018. We also reveal the top entities and law firms for filing in district courts and the PTAB last year

  • 2017 PTAB rankings – the top petitioners, patent owners, law firms and attorneys

    January 10, 2018

    Managing IP analyses Docket Navigator data on PTAB petitions filed in 2017 to reveal the most active entities and law firms. Apple was not the top petitioner for the first time since AIA trials became available, while a shake-up has occurred among law firms

  • En banc Federal Circuit rules IPR time-bar determinations are appealable

    January 09, 2018

    In Wi-Fi One v Broadcom, the Federal Circuit has held the time-bar determinations for instituting IPR at the PTAB are appealable. Observers believe this may foreshadow similar decisions for other areas of reviewability

  • 2017 sets new PTAB petition filing record – just!

    January 02, 2018

    A record number of PTAB petitions were filed last year, edging out 2015’s figure by one, according to data pulled from the Docket Navigator database. PGRs were more popular than CBMs for the first time last year

  • PTAB designates CBM review eligibility decision as precedential

    January 03, 2018

    September 2017’s Facebook v Skky, explaining the determination of covered business method patent review eligibility, is the 11th AIA trial decision to be deemed precedential

  • PTAB determines University of Minnesota’s immunity waived by federal court action

    December 20, 2017

    An expanded PTAB panel has determined that the filing of a federal court action waives the University of Minnesota’s Eleventh Amendment immunity, in the fourth decision to address state sovereign immunity

  • PTAB decisions tip in patent owners’ favour – study

    December 15, 2017

    For the first time, the Patent Trial and Appeal Board has upheld the majority of claims in IPR proceedings for four consecutive quarters, a Fitzpatrick 2016 study reveals

  • PTAB round-up: filing slumps; tribal immunity briefs filed; Oil States and SAS argued; Aqua Products guidance issued; new remand procedures outlined

    December 07, 2017

    November PTAB news included the lowest petition filing since January 2016, oral arguments at the Supreme Court, amicus briefing on whether tribal ownership immunises a patent from IPR challenges, guidance on motions to amend, new procedures for remands from the Federal Circuit, and an increase in fees

  • Tribal sovereign immunity: Taking a wrecking ball to the IPR system

    December 08, 2017

    The lawyer behind Allergan’s controversial transfer of patents to a Native American tribe says others are “lining up to do deals”. But, Michael Loney asks, will the PTAB rule that sovereign immunity applies in these types of deals?

  • District court stays pending PTAB review: an analysis of the past 12 months

    December 08, 2017

    Overall success rates of motions to stay district court litigation pending inter partes review at the Patent Trial and Appeal Board dropped noticeably in the past fiscal year. Christopher Hanewicz and Truscenialyn Brooks of Perkins Coie analyse recent stay statistics, including comparing by district and judge

  • Analysing SCOTUS oral arguments in Oil States and SAS Institute

    November 30, 2017

    US Supreme Court Justices seemed divided during arguments for Oil States v Greene’s Energy and SAS Institute v Matal. Patent lawyers have been busy making predictions about how the court will rule in the two cases, which could dramatically change how the Patent Trial and Appeal Board operates

  • PTAB releases Aqua Products guidance on motions to amend

    November 28, 2017

    The Patent Trial and Appeal Board confirms that In light of the Aqua Products decision it will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend

  • Michael Shore vows to “take a wrecking ball to the IPR system”

    November 22, 2017

    The lawyer behind Allergan’s controversial transfer of patents to a Native American tribe said at the IP Dealmakers Forum that other companies are “lining up to do deals” and that universities’ endowment funds are interested in getting involved. Shore outlined why he believed these types of deals are here to stay

  • Interview: Fish & Richardson’s Dorothy Whelan on pharma PTAB proceedings

    November 17, 2017

    Dorothy Whelan, co-chair of Fish & Richardson’s post-grant practice group, has been involved in high-profile cases such as the first IPR decisions that invalidated Humira patents. As part of the Women in IP series, Whelan speaks to Michael Loney about the biggest issues at the PTAB

  • PTAB revises procedures for Federal Circuit remands

    November 17, 2017

    The Patent Trial and Appeal Board has revised the “Standard Operating Procedure 9 (SOP9)” for cases remanded from the Federal Circuit, including requiring panels to meet with the PTAB chief, deputy chief or a delegate to discuss remanded cases

  • USPTO to increase fees, including 72% IPR request fee change

    November 16, 2017

    The USPTO has released a final rule detailing fee increases to go into effect in January. The combined cost of an inter partes review request and institution at the Patent Trial and Appeal Board will go up to $30,500

  • PTAB requests tribal immunity briefs, House holds hearing

    November 09, 2017

    The Patent Trial and Appeal Board has asked for amicus briefing on whether tribal ownership immunises a patent from IPR challenges, while a House of Representatives subcommittee held a hearing on sovereign immunity and the intellectual property system in which ranking member Jerry Nadler said Allergan’s deal with a Native American tribe “makes a mockery of Congressional authority and of the rule of law”

  • PTAB round-up: steady filing; Aqua Products fall-out; precedential and informative decisions; and more

    November 08, 2017

    October at the Patent Trial and Appeal Board saw a levelling out of petition filing, the first ever extension of the final written decision deadline for good cause, and one precedential and three informative PTAB decisions

  • When should the USPTO intervene in PTAB appeals?

    October 27, 2017

    The USPTO intervenes in less than a quarter of appeals of PTAB decisions to the Federal Circuit. Nathan Kelley, USPTO deputy general counsel for intellectual property law, recently shed some light on when and why the office chooses to do so

  • Federal Circuit judges offer tips for PTAB appeals

    October 27, 2017

    Federal Circuit judges discussed how they handle appeals from the Patent Trial and Appeal Board during an AIPLA session. Judge Newman also took the chance to offer a solution for the Supreme Court ruling on the pending Oil States case

  • PTAB designates three opinions addressing § 325(d) as informative

    October 25, 2017

    The PTAB has designated as informative three opinions addressing its ability to reject petitions because the same prior art or arguments previously were presented to the USPTO. Some believe this helps give guidance on how to make patents “IPR proof”

  • PTAB extends an IPR for good cause for the first time

    October 25, 2017

    The PTAB has extended the one-year deadline in Minerva Surgical v Hologic by six months. The final written decision in the inter partes review was originally set to expire two days after the Federal Circuit released its en banc Aqua Products opinion

  • USPTO’s Matal hints at PTAB improvements

    October 24, 2017

    Joseph Matal, who is performing the duties of USPTO director, gave a speech discussing the Patent Trial and Appeal Board, including upcoming USPTO guidance on Aqua Products, how the precedential General Plastic opinion will reduce serial attacks on the same patent, the evolving 325(d) jurisprudence, and two PTAB cases he thought have a shot of being taken up by the Supreme Court

  • Judge criticises Allergan’s Native American tribe deal, invalidates Restasis patents

    October 18, 2017

    Judge Bryson in the Eastern District of Texas has noted “serious concerns” about Allergan transferring patents to the Saint Regis Mohawk Tribe to benefit from sovereign immunity but joined the tribe to litigation against Mylan and Teva – “Allergan’s tactic, if successful, could spell the end of the PTO’s IPR program”

  • Analysis: Was the Federal Circuit’s Aqua Products opinion a wash out?

    October 06, 2017

    The Federal Circuit’s en banc Aqua Products v Matal ruling has been described as “a complete non-event” and “a real mess” that “did little to resolve the big questions” surrounding the PTAB's treatment of motions to amend. However, it did shift the burden of persuasion to the petitioner, while some believe the Chevron implications of the decision are most interesting

  • PTAB filling falls in Q3 but still on track for record year

    October 04, 2017

    The third quarter had the fewest Patent Trial and Appeal Board petitions since the first quarter of 2016. In September, the Board designated one of its decisions as informative and also granted a rare rehearing in an IPR involving the Coalition for Affordable Drugs

  • Federal Circuit issues narrow en banc Aqua Products opinion

    October 04, 2017

    The long-awaited Aqua Products ruling is narrow – a result of different views on the judgment and the rationale that should be employed. The matter is remanded for the PTAB to consider the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner

  • How Allergan’s Mohawk tribe patent deal could blow up the IPR system

    September 21, 2017

    If successful, Allergan’s eye-catching gambit of seeking to cancel PTAB proceedings by assigning patents to the Saint Regis Mohawk Tribe would be a blueprint for others to follow. But will the PTAB rule that sovereign immunity applies in this case?

  • Ropes & Gray hires PTAB chair from Oblon, and other US people moves

    September 12, 2017

    Managing IP’s regular update of people moves includes hires by Ropes & Gray, Norton Rose Fulbright, Honigman Miller Schwartz and Cohn, Hogan Lovells, Wolf Greenfield, Shook Hardy & Bacon and BakerHostetler. These include new roles for two former AIPLA presidents

  • PTAB August round-up: Filing down; Federal Circuit criticises PTAB in two opinions; ruling on standing

    September 07, 2017

    126 PTAB petitions were filed in August, while the Federal Circuit expressed concern with the Board’s practice of joinder and expanded panels in Nidec Motor v Zhongshan Broad Ocean Motor, said it abused its discretion for failing to consider material evidence in Ultratec v CaptionCall, and ruled that an IPR petitioner doesn’t need to satisfy Article III standing requirements to participate in a patent owner’s appeal in Personal Audio v EFF

  • Federal Circuit to answer “serious questions” about PTAB joinder and panels

    September 07, 2017

    A concurring opinion in Nidec Motor v Zhongshan Broad Ocean Motor critical of the PTAB’s position on joinder and expanded panels suggests the Federal Circuit will further scrutinise these issues in future decisions

  • July PTAB data and analysis: Filing falls, motion to amend granted on remand, Federal Circuit reverses amendment, sovereign immunity applied for third time

    August 09, 2017

    139 Patent Trial and Appeal Board petitions were filed in July. The month also included the Board granting a motion to amend on remand, the Federal Circuit vacating a granted motion to amend, and sovereign immunity as a defence to an IPR being applied for the third time

  • PTAB designates Athena Automation assignor estoppel decision as precedential

    August 09, 2017

    The Patent Trial and Appeal Board’s October 2013 decision determining that the doctrine of assignor estoppel is not an exception to Section 311(a) is the ninth to be deemed precedential

  • PTAB first-half data: Comcast tops petitioner ranking, Rovi most targeted patent owner

    August 01, 2017

    Comcast taking its dispute with Rovi to the PTAB made them the top petitioner and patent owner at the PTAB in the first half of 2017. Apple and Samsung have fallen down the petitioner rankings while Fish & Richardson, Sterne Kessler and Finnegan dropped in the law firm rankings, with Banner Witcoff, Baker Botts and Ropes & Gray making strides

  • Interim USPTO director Matal makes predictions on Oil States, TC Heartland and reform

    July 21, 2017

    In an open and wide-ranging speech at the Patents for Financial Services Summit in New York, interim USPTO director Joseph Matal predicted “we are going to win” the Oil States case, TC Heartland “is not going to put the venue issue to bed” and “there will be further patent reform legislation in the coming Congress”

  • Predicting Aqua Products, evolving estoppel, expert testimony strategies – PTAB issues to watch

    July 17, 2017

    The discussions at Managing IP’s recent PTAB Forum 2017 provided some clues about the biggest issues on PTAB practitioners’ minds, including estoppel, handling remands, expert testimony strategies and predictions for two pending Federal Circuit en banc opinions

  • Record half for PTAB filing ends with 206 petitions in June

    July 07, 2017

    PTAB data and round-up: June was the second-busiest month of 2017 for Patent Trial and Appeal Board petition filing, with Halliburton Energy Services the top petitioner. The Federal Circuit issued interesting decisions on estoppel and APA requirements, while the Supreme Court Oil States case is already having an impact

  • Why PTAB’s double threat is not causing panic yet

    July 06, 2017

    The future of the Patent Trial and Appeal Board was placed in peril by two developments in June – a Supreme Court case that could find AIA trial unconstitutional and a bill in Congress that would completely gut the Board. But PTAB petitioners and fans of the Board have reason to be confident that both threats will be seen off

  • Analysis: STRONGER Patents Act would “gut” the PTAB

    June 29, 2017

    The STRONGER Patents Act would mean a weaker PTAB. The bill has received support from pro-patent groups but its critics say it “contains many terrible ideas” and “would for all practical purposes end AIA trial proceedings”

  • PTAB grants Schaeffler's motion to amend claims

    June 29, 2017

    The Patent Trial and Appeal Board has issued a rare granted motion to amend in Valeo North America v Schaeffler Tech, suggesting the Board is willing to consider well-crafted substitute claims

  • Analysis: Kyle Bass ends his PTAB campaign with a win

    June 28, 2017

    This month saw the PTAB issue the final decision on a Kyle Bass inter partes review. Michael Loney asks whether that’s the last we’ll see of Bass at the Board and analyses the legacy of his campaign against pharmaceutical patents

  • Analysis – future of the PTAB on the line in Oil States case

    June 15, 2017

    The US Supreme Court would create a mess that would need Congressional action were it to find inter partes reviews unconstitutional in the Oil States case. But a reversal of the Federal Circuit in this case is less likely than in other patent cases the court has taken on recently

  • STRONGER Patent Act introduced in US Senate to reform PTAB

    June 22, 2017

    The STRONGER Patent Act would reform the Patent Trial and Appeal Board and address “the continual weakening of patent rights by the courts”, according to sponsors Senators Coons, Cotton, Durbin and Hirono

  • US Supreme Court to rule on constitutionality of AIA trials

    June 12, 2017

    The Supreme Court has granted cert to Oil States Energy Services v Green’s Energy Group to assess whether inter partes review violates the Constitution by not providing a jury trial. It is the third PTAB case the court will hear

  • Generic company IPR study reveals “surprisingly high” institution rate

    June 12, 2017

    A Foley & Lardner study of generic drug company IPRs against pharmaceutical patents shows an increased willingness to use the PTAB, an above-average institution rate but below-average invalidation rate

  • PTAB round-up: Record PGR filing in May, second sovereign immunity dismissal

    June 05, 2017

    Patent Trial and Appeal Board filing in May was below average for the year, but included a record amount of PGR petitions. The month was also notable for the Supreme Court taking on a PTAB case and the Board dismissing an IPR against a state entity on sovereign immunity grounds for the second time

  • SCOTUS to rule on PTAB partial institution practice in SAS Institute v Lee

    May 24, 2017

    The US Supreme Court may be set to end the Patent Trial and Appeal Board’s practice of instituting only some of the claims challenged in a petition and replace it with an “all or nothing” system, after granting cert in SAS Institute v Lee

  • PTAB round-up: April filing slumps to lowest level for a year

    May 03, 2017

    IPR filing so far in 2017 is up on last year, but CBM and PGR filing are both down. Michael Loney analyses Patent Trial and Appeal Board petition activity in April, and highlights a rare instance of the ITC taking notice of PTAB institution decisions

  • Software in the wake of Alice: intended target or inadvertent casualty?

    April 28, 2017

    Myungjin Ro and Neil Davey review the impact of the US Supreme Court decision in Alice v CLS on software patenting, and analyse which courts seem to favour software patent holders and which courts appear to be harsher

  • PTAB insights from our recent US Patent Forums

    April 14, 2017

    Speakers discussed PTAB issues of interest and other hot topics at Managing IP’s US Patent Forums, including estoppel, a reawakening of APA issues at the Federal Circuit, the upcoming en banc rehearing of Wifi One v Broadcom, stay success rates, best strategies for using experts before the Board, and life sciences’ better survival rate in final written decisions

  • PTAB Q1 rankings: 190 petitions in March round out record quarter

    April 11, 2017

    Patent Trial and Appeal Board petition filing in the first three months of 2017 was the largest quarterly filing figure ever. Michael Loney reveals the top petitioners, patent owners and law firms and analyses recent Federal Circuit and Board decisions of note

  • PTAB urged to designate more precedential decisions

    April 11, 2017

    Speakers at a recent Managing IP event called for the PTAB to give more precedential opinions to reduce inconsistencies between different panels, and identified gaps that the Board should address

  • USPTO announces PTAB procedural reform initiative

    April 07, 2017

    USPTO announces initiative to examine Patent Trial and Appeal Board procedures including those relating to multiple petitions, motions to amend, claim construction and decisions to institute

  • PTAB judges shed light on pet peeves and give tips for practitioners

    April 10, 2017

    At recent Managing IP events, PTAB judges discussed what practitioners do wrong during proceedings and shared tips for expert declarations, oral arguments and motions to amend. It was also revealed the Board has set a goal of dealing with remands within six months

  • PTAB grants Shire’s motion to amend

    April 05, 2017

    The Patent Trial and Appeal Board has allowed Shire to cancel all claims instituted for inter partes review except for one multiple dependent claim that was amended to depend on only non-instituted claims

  • PTAB issues last Coalition for Affordable Drugs written decision

    March 22, 2017

    The Patent Trial and Appeal Board has now given rulings in all 33 petitions filed by Kyle Bass’s Coalition for Affordable Drugs. The final tally is that the coalition succeeded in getting claims invalidated in 27% of the total petitions filed and 50% of those that were instituted

  • US district court 101 invalidity rates down slightly in 2017

    March 21, 2017

    The Federal Circuit maintains its high invalidity rate on Section 101 decisions so far this year but the district court rate has fallen, according to new figures from Fenwick & West’s Robert Sachs. One interesting recent trend is the PTAB has reversed all 16 ex parte appeals of Section 101 rejections since October

  • PTAB round-up: Petition filing slumps in February, Federal Circuit and Board decisions of note

    March 07, 2017

    Patent Trial and Appeal Board petition filing last month was down 47% on the record January. Michael Loney reveals the busiest entities and analyses Federal Circuit and Board decisions in February, including the latest Kyle Bass final written decisions

  • Should the Federal Circuit stop issuing Rule 36 affirmances?

    March 03, 2017

    Law professor Dennis Crouch is calling for the Federal Circuit to not give Rule 36 affirmances in PTAB appeals, arguing it is required by statute to issue an opinion. The court has continued to issue them but has asked for briefing in two en banc rehearing requests of affirmances

  • Amending claims at the PTAB – a fool’s errand?

    February 24, 2017

    Patent owners have found it tough to meet the requirements for motions to amend claims in PTAB post issuance review proceedings. Binal J Patel, J Pieter van Es and Kimberly S Devine examine the eight decisions where such motions have been granted

  • Federal Circuit reverses PTAB determination of CBM patent in Secure Axcess

    February 24, 2017

    The Federal Circuit has concluded “the patent at issue is outside the definition of a CBM patent that Congress provided by statute” in its Secure Axcess v PNC Bank National Association ruling. Judge Lourie wrote a dissent, backing up the PTAB’s determination

  • Federal Circuit vacates Apple PTAB win for inadequately supported findings

    February 17, 2017

    A Patent Trial and Appeal Board finding of unpatentability for obviousness based on two prior-art references in Personal Web Technologies v Apple has been remanded because “the Board did not adequately support its findings”

  • PTAB round-up: Record filing in January, Federal Circuit’s Phigenix standing ruling, denial of review decisions, district court estoppel

    February 14, 2017

    Michael Loney rounds up Patent Trial and Appeal Board-related decisions of note in January, including a precedential Federal Circuit decision on standing to appeal in Phigenix v ImmunoGen and two district court estoppel decisions

  • January breaks monthly PTAB filing record

    February 07, 2017

    246 Patent Trial and Appeal Board petitions were filed in January, according to data taken from Docket Navigator. No month had broken 200 petitions before. In contrast, district court patent case filing slumped

  • The top PTAB petitioners, patent owners, law firms and attorneys in 2016

    February 08, 2017

    The top petitioners, patent owners, law firms and attorneys in Patent Trial and Appeal Board petitions filed in 2016 have been revealed from Docket Navigator data. Apple only just hung onto its top petitioner status

  • Estoppel in PTAB proceedings and subsequent district court litigation

    January 27, 2017

    Jim Brogan, Brian Eutermoser and Janna Fischer discuss the ways that the unsuccessful IPR petitioner at the Patent Trial and Appeal Board still can challenge validity in subsequent district court litigation

  • Guest post and infographic: Analysing the PTAB in 2016

    January 30, 2017

    Patent Trial and Appeal Board institution rates fell and survival rates increased over the course of 2016. Finnegan's Joshua L Goldberg, Daniel F Klodowski, and David C Seastrunk analyse the year's post-grant proceeding statistics, including revealing that only three out of 43 motions to amend were granted in 2016

  • PTAB rules state sovereign immunity applies in IPR proceedings

    February 01, 2017

    The Patent Trial and Appeal Board has dismissed three inter partes review petitions filed by Covidien because the University of Florida Research Foundation is entitled to an Eleventh Amendment sovereign immunity defence

  • Federal Circuit PTAB appeal statistics, and how the Board handles remands

    January 18, 2017

    As of the end of the year, the Federal Circuit had affirmed on every issue in 77.4% of the Patent Trial and Appeal Board appeals it had seen. Finnegan has analysed what parties can expect from cases that are remanded to the Board

  • PTAB round-up: December filing data; Federal Circuit In re NuVasive decision; district courts narrow estoppel

    January 12, 2017

    Data and analysis: December Patent Trial and Appeal Board petition filing was the fourth-highest of 2016, the Federal Circuit recently heard en banc arguments in one PTAB appeal and granted en banc rehearing in another, the appeals court remanded the Board in In re NuVasive, and the District of Delaware interpreted the scope of estoppel narrowly in Intellectual Ventures v Toshiba

  • Federal Circuit dismisses PTAB appeal for lack of standing

    January 12, 2017

    The Federal Circuit in its precedential decision in Phigenix v ImmunoGen has ruled the petitioner lacked standing to appeal a Patent Trial and Appeal Board final written decision because of insufficient evidence to show an “injury-in-fact”

  • The final 2016 US district court patent case and PTAB filing figures

    January 11, 2017

    Patent case filing in US district courts fell 21% and PTAB petition filing fell 2% in 2016 over the previous year, according to figures taken from Docket Navigator. An RPX report has also revealed the most prolific NPEs of the year

  • Federal Circuit grants en banc review of PTAB time-bar orders

    January 04, 2017

    The Federal Circuit has granted en banc rehearing in Wi-Fi One v Broadcom. The court will consider whether judicial review is available for a patent owner to challenge the USPTO’s determination that the petitioner satisfied the timeliness requirement governing the filing of IPR petitions

  • PTAB: estoppel and subsequent district court litigation

    December 21, 2016

    Jim Brogan, Brian Eutermoser and Janna Fischer discuss the ways that the unsuccessful IPR petitioner at the Patent Trial and Appeal Board still can challenge validity in subsequent district court litigation

  • 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

  • November PTAB round-up: 2016’s second-busiest filing month, CAFC decisions of interest

    December 07, 2016

    Data and analysis: November was a strong month for Patent Trial and Appeal Board filing, while the Federal Circuit took issue with several decisions coming out of the Board

  • Sponsored post: Copyright notices as prima facie evidence of public accessibility

    December 02, 2016

    Validity challenges under the AIA increasingly rely on non-traditional publications such as web-based publications and product brochures. Michael O’Neill of Fitzpatrick Cella Harper & Scinto discusses the extent to which the publication’s copyright notice, which often is the only evidence submitted to prove the date of publication, is adequate for the task

  • 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

  • CAFC rules PTAB’s CBM definition too broad in Unwired Planet

    November 22, 2016

    In Unwired Planet v Google, the Federal Circuit has declared: “The Board’s application of the ‘incidental to’ and ‘complementary to’ language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent”

  • District court stays: a review of the past 12 months

    November 21, 2016

    Michelle Umberger and Lissa Koop analyse district court stays pending IPR or CBM and provide tips for seeking stays

  • 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

  • Kyle Bass goes on PTAB winning streak ahead of winter break

    November 03, 2016

    The Coalition for Affordable Drugs has notched a flurry of PTAB wins in the past two weeks. The next decisions will not come until the new year, however

  • Federal Circuit falling behind as PTAB appeals stack up

    November 01, 2016

    A backlog of Patent Trial and Appeal Board appeals is building up at the Federal Circuit. Finnegan’s Erika Arner discusses recent decisions of interest, including the appeals court affirming the invalidation of two patents cited in the creation of the covered business method patent programme

  • 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

  • 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

  • Kyle Bass gets first IPR win

    October 27, 2016

    The Patent Trial and Appeal Board has invalidated the claims of a patent covering Shire’s Gattex drug

  • Little impact from PTAB testimonial evidence so far

    October 14, 2016

    The ability to include testimonial evidence with patent owner preliminary responses in Patent Trial and Appeal Board proceedings has not been much help since it was introduced in May, according to an analysis by Oblon’s Scott McKeown

  • PTAB finds Shire patent valid in first Kyle Bass final decision

    October 07, 2016

    A patent related to Lialda has been found valid in the first final written decision of a Coalition for Affordable Drugs inter partes review. Decisions from the Patent Trial and Appeal Board on three more patents challenged by the coalition are due this month

  • Data: PTAB filing stabilises in third quarter

    October 05, 2016

    Managing IP reveals Patent Trial and Appeal Board filing figures for September and the third quarter, as well as ranking the top petitioners and patent owners for the first nine months of 2016. More PGRs than CBMs were filed for the first time ever in September

  • 10 issues to watch at the PTAB

    September 27, 2016

    Last month marked the fourth anniversary of Patent Trial and Appeal Board proceedings becoming available. While early cases suggested that the Board would be a graveyard for patents, in the past year a more nuanced picture has emerged. Michael Loney identifies 10 issues to watch

  • Federal Circuit rules it cannot review PTAB assignor estoppel

    September 28, 2016

    The Federal Circuit has outlined a two-part framework for deciding whether it can review an institution decision, in its Husky Injection Molding Sys v Athena Automation decision

  • Interview: Chief Judge David Ruschke leads the PTAB into new phase

    September 16, 2016

    The Patent Trial and Appeal Board’s chief judge believes his biggest challenge is taking the Board into a new introspective phase. He talks to Michael Loney about rule changes, PGRs’ potential, Cuozzo, motions to amend and ditching the death squad reputation

  • Pondering four years of PTAB proceedings

    September 16, 2016

    To mark the Patent Trial and Appeal Board’s birthday, Managing IP has identified 10 of the biggest issues related to post-grant proceedings and interviewed the Board’s chief judge to take stock of the first four years of proceedings and identify what challenges will affect its future

  • PTAB Bar Association launches

    September 16, 2016

    A bar association solely dedicated to the Patent Trial and Appeal Board has been formed by more than 45 law firms

  • PTAB 4 Years In: Federal Circuit appeal statistics and unresolved issues

    September 16, 2016

    The Federal Circuit has issued more than 100 decisions on PTAB appeals. But practitioners report many issues remain unsolved, one of which is whether the appeals court can cope with the caseload

  • PTAB 4 Years In: Biotech/pharma’s share of AIA trials increases

    September 16, 2016

    Biotechnology/pharmaceutical companies were slow to use the Patent Trial and Appeal Board. This is now changing, though this patent type has lower institution and invalidation rates

  • PTAB 4 Years In: Hedge funds and reverse patent trolls

    September 09, 2016

    A big story last year was the emergence of hedge funds and other entities using the Patent Trial and Appeal Board. While Kyle Bass is seeing his IPRs through to final decision, other entities are acting as reverse patent trolls, a phenomenon that is predicted to gather pace

  • PTAB 4 Years In: Don’t Estop Me Now

    September 09, 2016

    The Federal Circuit this year has provided some guidance on how district courts should treat estoppel from Patent Trial and Appeal Board trials. This has made defendants less terrified about estoppel but many questions remain. Practitioners are also concerned about how confidential material is treated in district courts and the Board

  • PTAB filing falls in August but higher than 2016 average

    September 07, 2016

    The number of Patent Trial and Appeal Board petitions filed in August was slightly above 2016 average. The month also saw notable Federal Circuit decisions on common sense, motions to amend and claim construction

  • PTAB 4 Years In: Rule changes – a declaration of intent

    August 31, 2016

    Rule changes at the Patent Trial and Appeal Board became effective in May. But practitioners tell Michael Loney they are struggling to see their impact. Some also call for the Board to go over its 12-month deadline for final written decisions in extraordinary circumstances

  • PTAB 4 Years In: Is the Board too hard on motions to amend?

    September 01, 2016

    The Federal Circuit will soon consider en banc the Patent Trial and Appeal Board’s amendment practice. But, asks Michael Loney, is the 5% success rate of motions to amend unfair on patent owners?

  • PTAB “arbitrary and capricious” in denying motion to amend – CAFC

    August 31, 2016

    The Federal Circuit has remanded the Veritas v Veeam Software case back to the Patent Trial and Appeal Board, finding its reason for denying a motion to amend “unreasonable”

  • PTAB 4 Years In: If you let me stay – district court and ITC trends

    August 25, 2016

    Data provided by LegalMetric reveals that stay motion success rate has stayed constant nationwide but some big shifts have occurred at district level. Michael Loney analyses the strategy for seeking a stay as well as two recent interesting ITC decisions involving PTAB proceedings

  • PTAB 4 Years In: An inconsistent CBM clampdown

    August 25, 2016

    The Patent Trial and Appeal Board has narrowed its definition of what constitutes a covered business method, causing a fall in filing, but the treatment varies by panel. The Federal Circuit may provide more clarity in its upcoming Unwired Planet v Google opinion, practitioners tell Michael Loney

  • PTAB chief judge Ruschke hails impact of expert declaration rule change

    August 23, 2016

    In a call with reporters, the Patent Trial and Appeal Board chief judge said the number of judges now is enough, praised the impact of submitting expert declarations with preliminary responses, and said the Board was open to going beyond the 12-month statutory deadline for issuing final written decisions

  • PTAB 4 Years In: PGRs ready for primetime

    August 18, 2016

    Post-grant review petition filing this year is already higher than the whole of 2015, with biopharma companies leading the way. Michael Loney analyses PGRs’ appeal and what strategies filers should consider

  • PTAB 4 Years In: A “new norm” for petition filing

    August 18, 2016

    Patent Trial and Appeal Board filing so far this year is down on 2015. Michael Loney speaks to PTAB practitioners to ask what is driving this and whether the downward trend will continue

  • Federal Circuit grants en banc review of PTAB amendment practices

    August 16, 2016

    The Federal Circuit has agreed to rehear en banc two issues relating to Patent Trial and Appeal Board amendment practices in the In re Aqua Products case

  • PTAB’s use of common sense reversed in Arendi v Apple

    August 16, 2016

    The Federal Circuit has issued a rare reversal of the Patent Trial and Appeal Board, ruling the use of common sense was misapplied in Arendi v Apple

  • Analysing the PTAB in the first half of 2016 – guest post

    August 10, 2016

    Patent Trial and Appeal Board institution rates declined while survival rates increased slightly in the first half of the year. Joshua L Goldberg, Daniel F Klodowski and David C Seastrunk of Finnegan Henderson Farabow Garrett & Dunner crunch the numbers and analyse the results

  • Sterne Kessler first law firm to 500 PTAB proceedings

    August 04, 2016

    Sterne Kessler has become the first law firm to handle more than 500 AIA proceedings, with a particularly strong showing representing defendants. Fish & Richardson is the top law firm for challengers at the PTAB, breaking the 300 petition mark

  • The PTAB, pharmaceutical patents and reverse payments

    August 03, 2016

    The authors of a new white paper believe that almost 75% of pharmaceutical patent settlements at the Patent Trial and Appeal Board meet the criterion for inferring a strong likelihood of reverse payment settlement. The paper also suggests a rule to deter attempts to exploit the Board as a holdup device as well as discussing reverse patent trolls

  • PTAB’s third PGR decision invalidates container delivery patent

    August 03, 2016

    The PTAB has ruled that Boxbee’s storage container tracking patent is invalid under Alice, in its third final written decision of a post-grant review petition

  • 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

  • Unified Patents files PTAB challenges to 2016’s three busiest NPEs

    July 28, 2016

    Inter partes review petitions have been filed challenging patents owned by Shipping and Transit, Sportbrain Holdings and Uniloc, which have sued more than 200 companies combined in 2016

  • Federal Circuit reverses PTAB for shifting burden of proof to patent owner

    July 27, 2016

    The Federal Circuit concludes that the Patent Trial and Appeal Board erred in shifting the burden of proof on obviousness in this IPR from the petitioner to the patent owner, in In re Magnum Tools International

  • Has the PTAB peaked already?

    July 14, 2016

    The Patent Trial and Appeal Board filing statistics reveal a drop for the second consecutive six-month period. According to Unified Patents, NPEs are the targets in 41% of petitions so far this year

  • Data: PTAB petitioners, patent owners and law firms in 2016’s first half ranked

    July 13, 2016

    Managing IP analyses the busiest companies and law firms at the Patent Trial and Appeal Board in the first six months of this year, using Docket Navigator. Filing was down in the first half as a whole but the second quarter showed signs of recovery

  • PTAB grants motion to amend ContentGuard patent in Google/Apple CBM

    July 14, 2016

    The Patent Trial and Appeal Board has granted a rare motion to amend, in a covered business method review that focused on the construction of the term “meta-rights”

  • PTAB grants attorneys fees for first time, to RPX

    July 13, 2016

    The Patent Trial and Appeal Board has awarded attorneys fees for the first time, ruling that Applications in Internet Time violated a protective order in its handling of RPX’s confidential information

  • June is busiest month for PTAB filing of 2016

    July 06, 2016

    PTAB Data and Analysis: Managing IP reveals Patent Trial and Appeal Board filing data for June and analyses recent decisions from the Supreme Court, Federal Circuit and PTAB, including the Board interpreting Enfish in mixed rulings. The USPTO has also announced it is replacing the Patent Review Processing System for PTAB trials

  • SCOTUS stands by PTAB in Cuozzo decision

    June 22, 2016

    The US Supreme Court has affirmed the PTAB’s standard for claim construction, in what some see as a blow to patent owners. Natalie Rahhal examines the Cuozzo case

  • 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

  • PTAB invalidates two patents in first PGR final written decisions

    June 14, 2016

    The Patent Trial and Appeal Board has invalidated two livestock valuation patents in the first PGR final written decisions. Only one of the 28 PGR petitions filed so far has been denied institution, with two settled and 11 waiting an institution verdict

  • 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

  • View our webinar on "PTAB Trials by the Numbers"

    June 08, 2016

    Our next Managing IP webinar is taking place on Tuesday June 14 and is titled “PTAB Trials by the Numbers”. Partners from Fitzpatrick Cella Harper & Scinto will provide a statistical analysis of inter partes review and covered business method trials at the Patent Trial and Appeal Board

  • Highlights from the PTAB Forum 2016

    June 08, 2016

    Managing IP rounds up interesting quotes, statistics, slides and tidbits from speakers at the PTAB Forum 2016 in New York, which included panels on Patent Trial and Appeal Board rule changes, Federal Circuit appeals, district court strategies, pharma challenges and more

  • Is the PTAB too unfair on motions to amend?

    June 07, 2016

    The USPTO’s efforts to explain why motions to amend are rarely successful at the Patent Trial and Appeal Board, including in a report revealing amendment statistics and at our recent PTAB Forum 2016, do not appear enough to persuade critics of the proceedings

  • 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

  • US Department of Justice files six IPRs

    May 19, 2016

    The Department of Justice has filed petitions at the Patent Trial and Appeal Board for the second time, targeting the patents involved in a suit brought by Discovery Patents and 3rd Eye Surveillance that seeks $1 billion in compensation from the US government

  • 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

  • PTAB has granted six of 118 reviewed motions to amend – study

    May 10, 2016

    A new USPTO study reveals the Patent Trial and Appeal Board (PTAB) has granted 5% of the motions to amend that it has had a chance to review and is on track to have about 50 motions filed this year, consistent with the level filed in 2013 and 2015

  • Is the PTAB more balanced than patent owners think?

    May 05, 2016

    A study of Patent Trial and Appeal Board decisions from Fitzpatrick suggests that outcomes are more balanced for patent owners than thought and that proceedings are more comparable to the European Patent Office’s opposition procedure

  • Data: PTAB filing up in April, led by HP

    May 04, 2016

    Managing IP reveals the biggest petitioners and most-targeted entities in April and year-to-date at the Patent Trial and Appeal Board. HP and Apple had a busy month, while Finjan and Nike were on the receiving end of the most petitions

  • PTAB grants sixth motion to amend

    May 03, 2016

    While granting Tire Hanger’s motion to amend, the Patent Trial and Appeal Board approved “grouping prior art references together according to their particular teachings” and “discussing only a representative few in its motion to amend”. This may provide guidance to other patent owners seeking to amend claims

  • Reactions and predictions from Cuozzo arguments at the Supreme Court

    May 02, 2016

    PTAB observers have been analysing the comments of Supreme Court justices during the Cuozzo v Lee arguments for signs of how they will rule. Chief Justice Roberts was the biggest proponent of bringing the Board’s claim construction standard in line with district courts but other justices appeared a lot more resistant to scrapping BRI

  • US Supreme Court hears Cuozzo oral arguments

    April 26, 2016

    The Supreme Court has heard oral arguments in Cuozzo Speed Technologies v Lee, the first Supreme Court case to consider an appeal of a PTAB decision

  • 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

  • Institutional change: PTAB issues to watch in 2016

    March 07, 2016

    The Patent Trial and Appeal Board is taking a harder line on institution, while PTAB watchers eagerly await a face-off at the Supreme Court over claim construction and the Federal Circuit increasingly pulls the Board up on procedural issues

  • 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

  • PTAB taking a harder line on CBM institution

    February 25, 2016

    More covered business method petitions are now being denied institution by the Patent Trial and Appeal Board than granted, with the Board seemingly narrowing what qualifies as a CBM patent

  • Analysing the Federal Circuit’s Nike opinion on amending claims in IPRs

    February 24, 2016

    The Federal Circuit provided guidance on motions to amend in inter partes review proceedings in its recent Nike v Adidas decision. PTAB observers are hopeful it is a sign the court will be harder on the Board’s resistance to substitute claims

  • 2015 PTAB petitioner trends and 2016 predictions

    February 24, 2016

    Scott A McKeown discusses three important Patent Trial and Appeal Board cases that addressed the important issue of estoppel, and looks ahead to this year with the Federal Circuit continuing to work through appeals and the Supreme Court set to rule on Cuozzo

  • PTAB could affect VirnetX’s $626m award in win over Apple

    February 04, 2016

    A jury in the Eastern District of Texas has awarded VirnetX $626m after finding Apple had infringed four patents. The PTAB instituted inter partes reviews on the patents last October, however, the results of which could affect the district court case

  • PTAB petitions in January lowest since March 2014

    February 03, 2016

    PTAB Data and Analysis: the IPR count ticked past the 4,000 mark in January, which also saw the first challenge to an Apple patent, the USPTO deeming two decisions precedential, a case showing the dangers of a motion to amend, and an ironic Federal Circuit ruling on an IPR appeal

  • How to prove it to the PTAB

    January 26, 2016

    The role of prior art has become important in many PTAB proceedings. Scott D Marty and Jonathon A Talcott discuss evidentiary challenges for petitioners and patent owners

  • Report reveals top reasons for resolution of PTAB proceedings

    January 22, 2016

    A Patent Trial and Appeal Board report from Lex Machina analyses the most common trial resolutions and the busiest administrative patent judges

  • The issues to watch in Cuozzo at the US Supreme Court

    January 21, 2016

    The Supreme Court in Cuozzo could scrap the PTAB’s use of the broadest reasonable interpretation in IPRs. But its ruling on the less-publicised question of whether institution decisions are unreviewable could have a bigger effect. In the meantime, petitioners and patent owners will have to adjust their PTAB strategies to guard against uncertainty

  • Federal Circuit rules same PTAB panel can institute and decide an IPR

    January 14, 2016

    The Federal Circuit has ruled that the same PTAB panel that institutes an inter partes review can also issue the final written decision, in Ethicon Endo-Surgery v Covidien. Judge Newman dissented, noting the statute requires institution to be made by the USPTO director and the final decision by the Board

  • The final 2015 US patent litigation and PTAB filing figures

    January 06, 2016

    With 2015 now behind us, it is a time for both looking back at the year just gone and forward to what that will mean for 2016. Some such as Erich Spangenberg are forecasting a stronger patent market

  • Kyle Bass’s success rate at the PTAB – an update

    December 22, 2015

    Hedge fund manager Kyle Bass has not gotten any holiday cheer from the Patent Trial and Appeal Board, with two of his petitions challenging pharmaceutical patents denied this month. The Board has now ruled on 16 of his inter partes review petitions

  • PTAB issues first decision on remand from Federal Circuit

    December 17, 2015

    The Patent Trial and Appeal Board has reversed in part its Microsoft v Proxyconn decision on remand from the Federal Circuit

  • Claim construction deference, the right to amend in IPRs, standards-essential patent damages and Ariosa – last week at the Federal Circuit

    December 08, 2015

    The Federal Circuit had a busy week, handing down decisions on a number of hot-button issues including the proper standard of review for claim construction, the right to amend a claim in IPRs, whether SEP royalties must be calculated using the smallest saleable unit and constitutional challenges to IPRs. The Court also denied a petition to rehear the controversial Ariosa case

  • Federal Circuit dismisses constitutional challenges to IPR process

    December 03, 2015

    The Federal Circuit has rejected arguments that inter partes review proceedings violate Article III and the Seventh Amendment of the Constitution, and again held that decisions to institute are not reviewable

  • Takeaways from the Federal Circuit's first reversal of a PTAB finding of validity

    November 25, 2015

    This month has seen two important Federal Circuit decisions disagreeing with the Patent Trial and Appeal Board’s findings. Its Belden v Berk-Tek opinion included a number of lessons for practitioners

  • Celgene win leaves Bass even in PTAB institution game

    November 16, 2015

    The PTAB has denied institution of a Coalition for Affordable Drugs inter partes review petition challenging a Celgene patent. This leaves Kyle Bass with a 50% institution success rate in the 14 petitions the Board has decided thus far

  • Federal Circuit vacates PTAB rejection of Ariosa IPR

    November 16, 2015

    In a decision that raises questions about the Patent Trial and Appeal Board's ability to complete IPRs within its one-year statutory deadline, the Federal Circuit has vacated a rejection of an IPR on the ground that the Board may have failed to sufficiently consider evidence

  • PTAB petitions pass 4,000 mark but USPTO proposes filing rate hike

    November 12, 2015

    Data – The number of PTAB petitions in October was the lowest since January. However, the USPTO also proposed raising the filing fees during the month

  • Data: Analysing the busiest PTAB petitioners, patent owners and law firms so far in 2015

    November 12, 2015

    Managing IP analyses the busiest companies, law firms and attoneys at the Patent Trial and Appeal Board in the third quarter and so far this year, using the Docket Navigator database

  • Federal Circuit reverses PTAB in part in Belden v Berk-Tek

    November 10, 2015

    In a rare substantive opinion on a PTAB appeal, the Federal Circuit upheld the rejection of four claims but reversed the upholding of two further claims of a Belden patent

  • View our webinar on obviousness in US district courts and PTAB

    November 03, 2015

    View a replay of our “Effective obviousness arguments in district courts and PTAB” webinar, which took place on November 4 and featured McAndrews Held & Malloy president Robert Surrette and Stryker intellectual property counsel Mary Elizabeth Mauro

  • Kyle Bass PTAB institution success rate swings past 50%

    October 29, 2015

    The Patent Trial and Appeal Board has instituted four of the Coalition for Affordable Drugs’ IPR petitions challenging Celgene patents, bringing the total number its petitions instituted to seven and greatly shifting the success rate of what one law firm calls the “PTAB Crashers”

  • PTAB provides guidance on AIA estoppel provisions

    October 28, 2015

    Recent guidance from the PTAB relating to the estoppel provisions of the America Invents Act could have significant implications for US patent litigation. Daniel Zeilberger, Joseph Palys and Naveen Modi of Paul Hastings explain

  • Best practices for PTAB success

    October 26, 2015

    Terry Stanek Rea of Crowell & Moring had some helpful tips for dealing with the Patent Trial and Appeal Board for preliminary responses, amendments, discovery, deposition evidence, objections to evidence and hearings

  • Data – PTAB filing in September third-lowest of 2015

    October 21, 2015

    PTAB filing fell to the third-lowest figure of the year in September. The institution rate continues to fall, with RPX noting it will be interesting to watch if this affects the popularity of the IPR process

  • PTAB institutes Kyle Bass IPR challenging Cosmo Technologies patent

    October 07, 2015

    The Patent Trial and Appeal Board has instituted review of an inter partes review petition brought by the Coalition for Affordable Drugs, the first success for the Kyle Bass and Erich Spangenberg-backed entity after two previous denials of review

  • Demand letters, design patent damages, PTAB institution appeals, reputation damage for employee inventors – the Federal Circuit week in review

    October 05, 2015

    Last week's Federal Circuit precedential decisions include rulings on Vermont's suit against MPHJ, how to calculate damages in design patent cases, the appealability of PTAB decisions to institute and what constitutes new evidence in Board appeals

  • Circuit overload: How the Federal Circuit is changing

    September 29, 2015

    More than half of its judges have changed in the past five years, the Supreme Court keeps smacking it down, and a flood of new PTAB appeals is coming its way. Michael Loney assesses how today’s Federal Circuit is coping

  • PTAB refuses to sanction Bass, Spangenberg calls for crowdsourcing of IPRs

    September 29, 2015

    In a busy week for hedge fund IPR news, the PTAB has refused to sanction Kyle Bass’s Coalition for Affordable Drugs but denied an IPR petition by Ferrum Ferro Capital, while Erich Spangenberg has urged crowdsourcing of IPRs against pharma companies

  • What constitutes a covered business method under the AIA?

    September 24, 2015

    There is a split in authority at the Patent Trial and Appeal Board over what patent claims are covered business methods. James M Heintz and Jeffrey L Johnson of DLA Piper analyse recent developments

  • The top law firms for PTAB institution success

    September 22, 2015

    Statistics from Unified Patents reveal which law firms have the best percentages for institution rate by case and by claim in Patent Trial and Appeal Board proceedings

  • Federal Circuit’s Rule 36 affirmances of PTAB appeals causing frustration

    September 22, 2015

    The US Federal Circuit has issued substantive opinions in only four of the 28 Patent Trial and Appeal Board appeals it has ruled on, merely providing one-sentence affirmances for the rest. Michael Loney analyses the decisions so far

  • PTAB petition filing in August up 44% on previous month

    September 16, 2015

    PTAB petition filing has recovered from a lull in July. The 177 petitions filed in September were up 44% on the previous month

  • Kyle Bass vows to keep returning to the PTAB “kangaroo court”

    September 10, 2015

    If Kyle Bass has been put off by the PTAB denying three of his IPR petitions, he's not showing it. He has filed a further nine petitions since the Coalition for Affordable Drugs' first setback and has labelled the PTAB a kangaroo court

  • Bass PTAB challenge to Biogen patent fails

    September 03, 2015

    The USPTO’s Patent Trial and Appeal Board has refused to institute another inter partes review petition filed by Kyle Bass, this time against a Biogen patent for a method of treating multiple sclerosis

  • Proposed PTAB changes aim to increase balance

    August 26, 2015

    PTAB observers have reacted to USPTO’s extensive set of proposed rule changes, noting patent owners will benefit from proposals such as allowing testimonial evidence in their preliminary response. The USPTO has followed up the rule changes by also suggesting a pilot programme of having a single judge determine whether to institute an IPR

  • Two Bass IPRs fail at PTAB but more cases filed

    August 25, 2015

    The PTAB has declined to institute inter partes reviews brought against two of Acorda Therapeutic's patents covering its multiple-sclerosis drug, finding that the posters cited in evidence did not qualify as prior art

  • USPTO releases second package of PTAB rule changes

    August 19, 2015

    A second package of proposed changes to PTAB rules includes allowing patent owners to include new testimonial evidence in their oppositions and a requirement on PTAB practitioners to give the USPTO a more robust means with which to police misconduct

  • “A truthful irrelevancy” – Bass responds to Celgene accusations, files three IPRs

    August 13, 2015

    The Coalition for Affordable Drugs has filed its opposition to Celgene’s motion for sanctions in an IPR, arguing that profit is the motivation behind almost all PTAB petitions. It has also filed three more IPRs, bringing its total to 19

  • PTAB data – petitions down in July but spike in IPR settlements continues

    August 11, 2015

    Patent Trial and Appeal Board petition filing was down in July, but the month saw important decisions handed down by the Board and the Federal Circuit. The statistics for July also underlined that IPR settlements have spiked in 2015

  • Apple argues Federal Circuit cannot review PTAB time bar

    August 07, 2015

    In yesterday's oral arguments for Achates Reference Publishing v Apple, the Federal Circuit examined whether it had the authority to review a PTAB ruling that Apple's petition for IPR was not time barred

  • Data – Ericsson most-targeted company in PTAB filings in July

    August 04, 2015

    Managing IP’s analysis of Docket Navigator data on July’s Patent Trial and Appeal Board petitioners, patent owners, law firms and attorneys reveals TCL topped the petitioner rankings with its first IPRs

  • Celgene files motion for sanctions against Kyle Bass

    July 29, 2015

    Celgene has filed its motion for sanctions against the Coalition for Affordable Drugs with the PTAB. It makes for interesting reading, including alleging that Erich Spangenberg “first threatened Celgene with IPRs in January 2014”

  • Data: PTAB petitioners, patent owners and law firms in the first half of 2015

    July 20, 2015

    Managing IP analyses the busiest companies and law firms at the Patent Trial and Appeal Board so far this year, using Docket Navigator. The first half was notable for petitions from automotive companies and the Coalition for Affordable Drugs, while an Acacia Research subsidiary was the most targeted entity

  • PTAB petitions hit 2015 high in June

    July 21, 2015

    The 182 inter partes review petitions filed at the Patent Trial and Appeal Board in June was the most since June 2014. The month also saw two more post-grant review petitions as well as the Board instituting the first ever PGR proceedings

  • Assessing patent owners’ fightback against hedge fund IPRs

    July 16, 2015

    With the PTAB soon to issue institution decisions on the controversial IPR petitions from the Coalition for Affordable Drugs and Ferro Ferrum Capital, patent owners have hit back through sanctions and additional discovery, and a complaint for attempted extortion

  • PTAB cancelled 86% of instituted claims in June

    July 15, 2015

    An analysis by Finnegan reveals that the Patent Trial and Appeal Board cancelled 446 instituted claims in the 36 final written decisions it issued in June, giving a higher-than-average claim cancellation rate for the month

  • Nathan Kelley named acting PTAB Chief Judge

    July 14, 2015

    Nathan Kelley, who was previously solicitor of the USPTO, has been named as the acting chief judge of the Patent Trial and Appeal Board

  • Federal Circuit narrowly denies rehearing of Cuozzo PTAB appeal

    July 08, 2015

    A request for an en banc rehearing of an appeal of the PTAB’s use of the broadest reasonable interpretation standard is denied in a 6-5 Federal Circuit opinion, with strongly-worded dissents from Judges Prost and Newman

  • US patent litigation on course for record year – Unified Patents

    July 08, 2015

    A new report from Unified Patents reveals that 11.1% more US district court patent cases were filed in the first half of 2105 than in the same period in 2014, and PTAB filing was up 31% over the first half of last year

  • Data – Samsung most active PTAB petitioner in June with 23 IPRs

    July 06, 2015

    Managing IP’s analysis of Docket Navigator data on June’s Patent Trial and Appeal Board petitioners, patent owners, law firms and attorneys reveals Samsung was comfortably the most-active petitioner. But it was also a busy month for automotive inter partes review petitions

  • Automotive industry tries to put the brakes on NPEs

    July 01, 2015

    Following a near-doubling of patent litigation in the automotive industry in the past three years, car makers are hitting back at NPEs through PTAB petitions and defensive patent aggregators such as Unified Patents

  • Uncertainty over PTAB remand after first Federal Circuit reversal

    June 23, 2015

    It took 19 tries, but the PTAB has been overturned in a Federal Circuit appeal for the first time in Microsoft v Proxyconn. Patent holders take comfort that the Federal Circuit is not merely rubber stamping decisions but it is unclear how the Board will deal with the remand

  • Data: One year of Section 101 decisions since Alice

    June 22, 2015

    The figures in the year since the Supreme Court’s Alice ruling reveal that the district courts, Federal Circuit and PTAB are invalidating patents on 101 grounds at very high rates

  • PTAB allows Celgene to file for sanctions against Coalition for Affordable Drugs

    June 18, 2015

    The Patent Trial and Appeal Board has authorised Celgene to file motions for sanctions in response to four inter partes review petitions filed by the Coalition for Affordable Drugs, the entity Kyle Bass and Erich Spangenberg are using to challenge pharmaceutical patents

  • Bio/pharma IPRs by the numbers

    June 18, 2015

    Figures discussed at the BIO International Convention reveal that bio/pharma IPRs at the Patent Trial and Appeal Board have a lower institution rate and lower claim-cancellation rate than for all IPRs

  • PTAB allows motion to amend in IPR challenging Neste Oil patent

    June 15, 2015

    In a final written decision, the Patent Trial and Appeal Board found 24 claims of a Neste Oil patent invalid but allowed it to substitute four claims in a rare grant of a motion to amend

  • Fitbit, Jawbone, Kyle Bass, PTAB, iWatch – the week in IP

    June 14, 2015

    Jawbone suing fellow fitness tracking company Fitbit, Ray Niro’s views on the effect of Octane Fitness, the positive effect Kyle Bass has had for the pharma industry, questions over how PTAB numbers are perceived and a Federal Circuit decision on the iWatch mark were in the IP headlines in the past week

  • PTAB moves squarely into US lawmakers’ sights in rewritten PATENT Act

    June 10, 2015

    After previously being included on the fringes of discussion around US patent reform, Patent Trial and Appeal Board proceedings are now one of legislators' main focuses. The rejigged PATENT Act has been branded “a PTAB reform bill” by one observer

  • Bass files 16th IPR petition as opposition continues to build

    June 10, 2015

    Kyle Bass has filed another IPR petition targeting a pharma company, taking aim again at the Vimovo pain reliever, while IPO has passed a resolution opposing the use of post-grant proceedings to manipulate the market

  • IPRs and Section 101 to take centre stage at BIO convention

    June 10, 2015

    With the BIO International Convention taking place next week, Michael Loney analyses the biggest topics that will be discussed among IP practitioners at the event

  • 12% of litigated patents since 2012 challenged at the PTAB

    June 09, 2015

    Analysis by Unified Patents reveals the percentage of litigated patents that are challenged at the PTAB, the claim outcomes in terminated cases and final written decisions, and the extent to which Asian companies are using proceedings

  • May PTAB Data – Three PGRs filed in a busy month

    June 08, 2015

    The total number of post-grant review petitions filed with the Patent Trial and Appeal Board jumped to eight in May. The month also included 145 inter partes review petitions and an important ruling on estoppel by the Board

  • PTAB data: Apple regains top spot for filing in May

    June 03, 2015

    Managing IP’s analysis of Docket Navigator data on May’s PTAB petitioners, patent owners, law firms and attorneys reveals Apple regained the top spot for filing that it lost in April, while a corrections technology company had a busy month for IPR petitions

  • US PATENT Act moves out of Senate Judiciary Committee

    June 04, 2015

    The Judiciary Committee has voted to report the PATENT Act to the Senate

  • The fine line between abuse and fair use at the PTAB

    May 27, 2015

    Hedge fund manager Kyle Bass has outraged the pharma and biotech industries by seeking to invalidate their patents at the PTAB, with some observers linking his attacks to short-selling of company stocks. Michael Loney reports on a controversy that goes to the heart of the US patent system

  • Acorda questions real parties-in-interest in first Bass IPR

    May 28, 2015

    Acorda has filed a preliminary response to Kyle Bass’s first IPR petition, claiming the petition should be rejected for reasons including the petitioner using IPR as a tool to manipulate markets and failing to mention its investors and identifying them as real parties-in-interest

  • USPTO releases final rules package for PTAB quick fixes

    May 21, 2015

    The USPTO has released a final rule containing amendments to the regulations for Patent Trial and Appeal Board proceedings. These include increasing the page limits for the petitioner’s reply brief and the patent owner’s motion to amend

  • Kyle Bass files 15th IPR, targeting patent for Vimovo treatment

    May 21, 2015

    The Coalition for Affordable Drugs has filed an inter partes review petition challenging a patent for Pozen’s Vimovo drug, which Horizon Pharma holds the rights to in the US

  • Google, Oracle, Uber, Amazon, Twitter hashtags, stays pending IPR – the week in IP

    May 17, 2015

    The Obama administration agonising over which side to back in Google v Oracle; a dispute over a Twitter hashtag; Uber being granted a design patent; Amazon’s application for a drone delivery patent; and the success rate for motions stays were in the IP headlines in the past week

  • PTAB data – Car makers accelerate filing against Signal IP in April

    May 13, 2015

    Managing IP’s analysis of Docket Navigator data on April’s PTAB petitioners, patent owners, law firms and attorneys reveals the Coalition for Affordable Drugs’ campaign against pharma dropped Apple to second place for filing. Signal IP was the most targeted company

  • April busy for IPR filing, including 10 petitions from Kyle Bass

    May 12, 2015

    USPTO data reveals 148 PTAB petitions were filed in April. The month was notable for an escalation of Kyle Bass and Erich Spangenberg’s targeting of pharma companies, with 14 IPR petitions now filed by their Coalition for Affordable Drugs

  • Free webinar: Avoiding pitfalls in PTAB post-grant trials during the Second Phase

    May 08, 2015

    Are you up to speed with the requirements and standards at the Patent Trial and Appeal Board? View a replay of our webinar exploring how to avoid mistakes as a petitioner or patent owner during the Second Phase, from institution to the final written decision

  • Study of PTAB final decisions suggests death squad perception undeserved

    April 29, 2015

    A study by Fitzpatrick Cella Harper & Scinto suggests that the perception of the PTAB as a death squad for patents is outdated and petitioners and patent owners should adopt a more nuanced attitude that takes the type of challenge more into account

  • Bass and Spangenberg file sixth IPR petition, targeting Pharmacyclics

    April 21, 2015

    The Coalition for Affordable Drugs has filed another inter partes review petition at the Patent Trial and Appeal Board, in the latest move by Kyle Bass and Erich Spangenberg to target pharmaceutical companies’ patents

  • North America awards: The outstanding firms and individuals from the past 12 months

    April 21, 2015

    Managing IP’s annual North America Awards dinner was held in Washington, DC in March, and attended by guests from all over the US and Canada

  • Analysing PTAB filings in the first quarter of 2015

    April 16, 2015

    Managing IP analyses the busiest companies and law firms at the Patent Trial and Appeal Board so far this year, using the Docket Navigator database

  • Free webinar: Avoiding the pitfalls in post-grant trials at the PTAB

    April 14, 2015

    Are you up to speed with the requirements and standards at the Patent Trial and Appeal Board? Our next webinar will explore how to avoid mistakes as a petitioner or patent owner in proceedings

  • EFF succeeds in podcasting patent IPR proceeding at the PTAB

    April 10, 2015

    The USPTO has invalided claims in the “podcasting patent” challenged in an inter partes review petition from the Electronic Frontier Foundation

  • PTAB petitions pass the 3,000 barrier in March

    April 07, 2015

    The 131 IPR, 13 CBM and one PGR petitions in March pushed the total number of Patent Trial and Appeal Board petitions ever past 3,000. The Board also made a number of important decisions during the month

  • PTAB institutes proceedings on two Smartflash patents in $533m Apple loss

    April 07, 2015

    Samsung has convinced the Patent Trial and Appeal Board to institute covered business method review proceedings of two of the Smartflash patents that Apple was ordered to pay $533m for infringing in February

  • Federal Circuit rules CBM proceedings begin after institution

    April 06, 2015

    The Federal Circuit in Intellectual Ventures II v JP Morgan Chase has found that a covered business method review proceeding begins after institution by the PTAB, not at the time of a petition’s filing

  • Data – Apple and Toyota dominate March PTAB filings

    April 02, 2015

    Managing IP’s analysis of data from Docket Navigator reveals the petitioners, patent owners, law firms and attorneys that were busiest for PTAB filings in March

  • Bass and Spangenberg target another pharma company through IPR

    April 02, 2015

    UPDATED APRIL 7 TO INCLUDE NEW IPR: Hayman Capital’s Kyle Bass and IP Nav’s Erich Spangenberg have targeted a second and third pharmaceutical company at the PTAB, filing inter partes review petitions challenging patents owned by Shire and Jazz

  • USPTO implements “quick fixes” to PTAB page limits

    March 27, 2015

    The USPTO has revealed the first part of a three-part plan for changes to PTAB proceedings – an increase of page limits for both motions to amend and petitioner’s replies to 25 pages. It will follow this up with a second rule package in the summer

  • 93% of IPR claims cancelled by PTAB in February final written decisions

    March 26, 2015

    The Patent Trial and Appeal Board cancelled a far higher percentage of claims in inter partes review final written decisions during February this year than the average for all IPRs decided to date, according to Finnegan

  • Judge Smith: PTAB numbers not necessarily sign of success

    March 26, 2015

    In a spirited discussion at Georgetown University earlier this week, Judge James D Smith of the PTAB and other speakers weighed in on the state of AIA post-grant proceedings and what the future holds

  • Takeaways from the US Patent Forum in Silicon Valley

    March 25, 2015

    Managing IP held the US Patent Forum in Silicon Valley this week. Here are some points of interest from the event, including discussion of the ITC tightening the scope of its jurisdiction and a defence of the right for anyone to file an IPR (even a hedge fund)

  • Third IPR filed by an investment firm targeting pharma patents

    March 17, 2015

    An inter partes review petition has been filed by Ferrum Ferro Capital, challenging a patent owned by Allergan, in a continuation of a trend of hedge funds and financiers targeting large pharmaceutical companies through the Patent Trial & Appeal Board

  • IPR filing up 64% in February compared with previous month

    March 09, 2015

    February was a busy month for PTAB petition filing, and also included a rare reversal of a split decision from the Board as well as the first set of final written decisions on biopharmaceutical IPRs

  • Bass and Spangenberg double down on IPR strategy

    March 06, 2015

    Hedge fund manager Kyle Bass and IP Nav’s Erich Spangenberg have filed a second inter partes review petition against a patent owned by Acorda Therapeutics, as part of a strategy BIO said had “opened a new door to abuse of the US patent system”

  • Senator Coons throws “legislative grenade” at PTAB proceedings

    March 05, 2015

    The introduction of the STRONG Act suggests getting any patent reform passed in the US this year will be very tricky. The bill also proposes radical and worrying reforms of the PTAB

  • Pro-patent bill introduced in US Senate

    March 04, 2015

    The STRONG Patents Act has been introduced in the Senate, including provisions that would overhaul PTAB proceedings. It has support from the Association of American Universities and BIO but critics labelled it “a patent troll-led effort to draft a ‘fig leaf’ bill”

  • PTAB issues first written decisions on biopharmaceutical IPRs

    March 03, 2015

    The Patent Trial and Appeal Board has invalidated a set of patents covering an enzyme replacement therapy

  • PTAB reverses controversial joinder decision in landmark opinion

    February 19, 2015

    The Patent Trial and Appeal Board has granted a rehearing request on its earlier decision to deny a joinder motion, in a rare opinion from an expanded panel

  • The petitioners, patent owners and law firms topping the PTAB rankings

    February 11, 2015

    With filings at the Patent Trial and Appeal Board suggesting another strong year, Managing IP has analysed the leading players at the PTAB and also included a PTAB category in our IP Stars rankings for the first time

  • Data – 100 IPR petitions filed in January

    February 10, 2015

    A total of 115 PTAB petitions were filed in January. The Board also made a notable decision to deny CBM reviews of four Orange Book-listed patents owned by Jazz Pharmaceuticals

  • Federal Circuit’s Cuozzo opinion highlights unresolved IPR issues

    February 09, 2015

    PTAB observers have been assessing the importance of the first Federal Circuit opinion on an inter partes review appeal, saying questions remain over estoppel and the broadest reasonable interpretation standard

  • Data: the busiest companies at the PTAB in 2014

    February 23, 2015

    Analysis of Patent Trial and Appeal Board petitions using the Docket Navigator database reveals the top petitioners, patent owners, law firms and lawyers during 2014

  • Reaction to the Federal Circuit’s Cuozzo opinion

    February 05, 2015

    PTAB practitioners say the first Federal Circuit opinion on an IPR appeal gives certainty about the broadest reasonable interpretation claim construction standard used in proceedings

  • Federal Circuit issues opinion on first IPR appeal

    February 04, 2015

    The Federal Circuit has released its first opinion on a PTAB appeal, in In Re Cuozzo Speed Technologies, affirming the Board’s final determination. A strongly-worded dissenting opinion from Judge Pauline Newman questioned the panel’s reasoning, however

  • MCM asks Federal Circuit to find IPR statute unconstitutional

    January 29, 2015

    An appeal to the Federal Circuit has questioned whether actions to revoke a patent at the Patent Trial and Appeal Board are unconstitutional for violation of the Seventh Amendment right to a jury trial

  • 55% of PTAB petitions in 2014 filed against NPEs – report

    January 21, 2015

    Unified Patents has released an analysis of 2014 at the Patent Trial and Appeal Board

  • PTAB allows first contested claim amendment

    January 08, 2015

    The Patent Trial and Appeal Board’s decision to allow Silver Peak Systems to amend the claims of two patents is only the second time it has permitted amendment, and the first amendment to have been contested by the petitioner

  • Alice provides “substantial boost” to PTAB CBM reviews

    January 07, 2015

    Alice has greatly increased the number of covered business method review petitions alleging unpatentable subject matter and has also increased the PTAB’s rate of institution of 101 reviews, data from Goodwin Procter reveals

  • Record PTAB year ends with 1,681 petitions filed

    January 06, 2015

    December was the second busiest month of 2014 for filings at the Patent Trial and Appeal Board and rounded out a record year. The month also included a patent owner being sanctioned for the first time, after an offensive image of a judge was put online

  • Iron Dome win raises fears of “PTAB trolls”

    December 20, 2014

    Iron Dome, which threatened to file an IPR petition against an NPE’s patent if it was not granted a licence for its members, has won dismissal of a lawsuit accusing it of extortion. It is not the only company using this tactic, leading to talk of “PTAB trolls” and questions of whether fee shifting should be an option at the PTAB

  • Microsoft to pay VirnetX $23m and dismiss IPR proceedings

    December 20, 2014

    VirnetX and Microsoft have signed an amended settlement and license agreement that amends and restates certain terms of their original settlement and settles their pending patent disputes

  • Big win for brand-name pharma companies in PTAB final decision

    December 13, 2014

    In a PTAB decision that brand-name pharmaceutical companies will celebrate, generic drug company Amneal has failed in its attempt to have three patents owned by Galderma cancelled – the first final written decision to involve an Orange Book-listed patent

  • LG and Apple have a busy day at the PTAB

    December 11, 2014

    Electronics companies LG and Apple went on the offensive at the PTAB on December 10, filing 22 IPR petitions between them

  • Sandoz decision will encourage biosimilar PTAB proceedings

    December 10, 2014

    The Federal Circuit’s decision in Sandoz v Amgen will lead to biosimilar companies looking to use PTAB proceedings more to invalidate drug patents, because it is now harder for them to bring district court actions before filing biosimilar applications

  • PTAB petitions down in November, but third PGR filed

    December 08, 2014

    The number of petitions for inter partes review and covered business method review at the Patent Trial and Appeal Board both fell in November compared with October, but the third petition for post-grant review was filed by a cattle breeders association

  • PTAB appeals at Federal Circuit to test boundaries of institution

    December 03, 2014

    The Federal Circuit this week will hear the second appeal of a PTAB decision. Patent owners and petitioners are anxious to see how the court will shape issues such as what parts of institution decisions can be appealed and what the correct claims construction standard should be

  • PTAB gives guidance on motions to amend

    November 24, 2014

    The Patent Trial and Appeal Board has provided additional guidance on the requirements for motions to amend and allowed substitute claims to be placed in an appendix, in a move that may make it easier for patent owners to amend claims in inter partes review or covered business method review

  • Federal Circuit reverses another denial of a stay pending CBM review

    November 21, 2014

    The Federal Circuit has overturned a Delaware district court denial of a stay pending a covered business method review at the PTAB. The Versata Software v Callidus Software decision is the second reversal of a district court denial of a stay pending a CBM review

  • IPR appeal hearing, Facebook, MPHJ, Eiffel Tower, Federal Circuit – the week in IP

    November 14, 2014

    The oral hearing of the first appeal of an inter partes review decision, 24% of Facebook ads linking to counterfeit goods, Vermont continuing its fight against patent troll MPHJ, whether the Federal Circuit is anti-patent, and the Eiffel Tower’s copyright were among the intellectual property stories hitting the headlines this week

  • “Embrace IPRs”, says IP Nav’s Erich Spangenberg

    November 11, 2014

    Erich Spangenberg, owner and founder of IP Navigation Group, said patent owners should not complain about inter partes reviews and that he hoped people do file them, on a panel at the IP Dealmakers Forum in New York on November 6

  • IPRs break 2,000 mark in October, as Google targets Rockstar patents

    November 10, 2014

    October was the second-busiest month so far for IPR petitions at the Patent Trial and Appeal Board. Google was responsible for some of the more interesting petitions as it began taking aim at the patents at issue in its dispute with Rockstar

  • NPEs not faring worse at PTAB than other companies – study

    November 04, 2014

    A new study of inter partes review data reveals that petitions challenging NPE-owned patents are more likely to be instituted but have claims invalidated at a lower rate

  • Patent Quality Initiative files nine IPR petitions

    October 30, 2014

    The Patent Quality Initiative has filed nine inter partes review petitions directed at patents owned by two non-practicing entities, and has also filed a friend-of-the-court brief urging the Federal Circuit to cancel two Intellectual Ventures patents

  • Phil Johnson calls for fairness in PTAB proceedings

    October 24, 2014

    In a session at the AIPLA Annual Meeting, David Kappos said that Federal Circuit decisions will show whether the Patent and Trial Appeal Board (PTAB) is on the right track while Phil Johnson stressed that the proceedings must be perceived as fair

  • AIPLA calls for changes in PTAB proceedings

    October 23, 2014

    The USPTO has received a total of 37 comments about Patent Trial and Appeal Board (PTAB) proceedings – including from AIPLA – after 22 comments were submitted in the three days before the October 16 deadline for comments

  • Post-grant reviews at the PTAB explained

    October 22, 2014

    Two post-grant review petitions have been filed at the Patent Trial and Appeal Board since August. But it will take years for the popularity of this type of review to come close to that of inter partes review

  • Last-minute submissions push PTAB comments total to 37

    October 18, 2014

    After 22 comments were submitted in the three days before the deadline for comments about Patent Trial and Appeal Board (PTAB) proceedings, the USPTO has received feedback from a total of 37 companies, organisations and individuals

  • Patent Quality Initiative formed to file amicus briefs, petition for IPRs, educate

    October 15, 2014

    Banking association and payments company The Clearing House has announced the formation of the Patent Quality Initiative (PQI), an advocacy organisation that will seek to promote strong patents and discourage the assertion of patents it believes are invalid

  • They tried to make me go to PTAB…

    October 31, 2014

    Should you ever say no, no, no when deciding whether to try invalidating a rival’s patent at the Patent Trial and Appeal Board? Michael Loney looks at the considerations involved, including the falling institution rate and uncertain chances of being granted a stay

  • PTAB petition filing down in September, second PGR filed

    October 07, 2014

    Data Analysis: Patent Trial and Appeal Board (PTAB) petition filings broke the 2,000 barrier in September, which also saw the second ever post-grant review (PGR) petition. The figures for fiscal year 2014 were up greatly on previous years

  • Federal Circuit schedules first IPR appeal argument

    October 06, 2014

    The Federal Circuit will next month hear the oral argument for the first appeal of an inter partes review, In re Cuozzo Speed Technologies

  • Patent licensing professionals still adjusting to PTAB proceedings

    October 02, 2014

    IP licensing professionals have not yet caught up with how the advent of Patent Trial and Appeal Board (PTAB) proceedings is affecting their business

  • Analysis: Is the PTAB a troll killer?

    October 31, 2014

    The Patent Trial and Appeal Board has provided a useful way for those sued by patent trolls to fight back. It is not just the companies directly affected by litigation that are looking to kill patents, however, says Michael Loney

  • PTAB issues “surprising” joinder order

    September 26, 2014

    The Patent Trial and Appeal Board (PTAB) has issued an expanded panel order in which it denied joinder under the 315(c) statute, in Target v Destination Maternity

  • PTAB designates seven IPR decisions as “informative”

    September 26, 2014

    The Patent Trial and Appeal Board has designated seven of its decisions rendered in inter partes review (IPR) proceedings as “informative”

  • PTAB proceedings – the most stay-friendly district courts

    September 25, 2014

    Trial schedules being trimmed, institution rates falling and judges not playing ball as expected over granting motions to stay are some of the lessons gleaned from a new report by Goodwin Procter on the first two years of PTAB proceedings

  • Rackspace claims victory over “troll” at PTAB, promises more

    September 23, 2014

    Rackspace is celebrating victory at the Patent Trial and Appeal Board (PTAB) against Rotatable Technologies after a patent covering screen rotation was declared invalid. An analysis of Rackspace’s other litigation shows it's far from done taking on those it sees as patent trolls

  • PTAB confirms vice-chief judge and board executive appointments

    September 22, 2014

    The Patent Trial and Appeal Board has appointed Scott Boalick to the position of vice-chief administrative patent judge and Adam Ramsey to the position of board executive

  • USPTO extends PTAB comment period; Myriad revision out next month

    September 18, 2014

    The USPTO has extended the comment period on trial proceedings Under the America Invents Act before the Patent Trial and Appeal Board (PTAB)

  • PTAB petitions break 1,900 barrier in August

    September 03, 2014

    The Patent Trial and Appeal Board (PTAB) is set to accept its 2,000th petition this month, following it going past the 1,900 mark and accepting its first post-grant review petition in August

  • The surprising rise of the PTAB

    September 01, 2014

    Patent owners have been shocked at how popular IPR proceedings at the PTAB have proven. As the USPTO mulls over changes and the Federal Circuit braces itself for a deluge of appeals, Michael Loney reports on how the PTAB is likely to evolve

  • PTAB "a very scary process" – patent lawyers

    September 01, 2014

    Patent owners have discovered that PTAB proceedings are an intense ordeal that leaves little chance for discovery or amending claims, while lawyers more used to district courts have endured a steep learning curve. Michael Loney reports on lessons learned from the PTAB frontlines

  • PTAB proceedings catching on with pharma industry

    September 01, 2014

    Patent Trial and Appeal Board proceedings are increasingly popular among pharma firms, in particular among generics eager to find a new way to invalidate big pharma’s patents. Marion Webb reports

  • The biggest PTAB milestones so far. Is a rule tweak next?

    August 28, 2014

    The almost two years of Patent Trial and Appeal Board proceedings have been a steep learning curve. Now it seems the USPTO may make some changes to proceedings to take those lessons into account

  • First PGR petition filed at the PTAB

    August 21, 2014

    The first post-grant review (PGR) petition has been filed with the Patent Trial & Appeal Board (PTAB) by LaRose Industries and Toys “R” Us-Delaware

  • PTAB issues precedential decision in CBM review proceeding

    July 31, 2014

    The Patent Trial and Appeal Board (PTAB) has issued the first decision designated as precedential in a covered business method patent review proceeding, in SecureBuy v CardinalCommerce Corporation

  • CAFC’s VirtualAgility verdict suggests stays pending CBM review should be granted

    July 16, 2014

    In a keenly-anticipated decision, the Federal Circuit has ruled that the Eastern District of Texas was wrong not to stay infringement proceedings in VirtualAgility v Salesforce pending the conclusion of a covered business method (CBM) review at the Patent Trial and Appeal Board (PTAB)

  • PTAB grants motion to amend in IPR for first time

    May 22, 2014

    The Patent Trial & Appeal Board (PTAB) has granted a motion to amend claims in an inter partes review proceeding for the first time since the passage of the America Invents Act

  • How to fix the amendment fallacy

    April 28, 2014

    The Patent Trial and Appeal Board has made it hard for patent owners to amend their claims. Patrick Doody outlines the problems this causes and how to fix them

  • US Patents: High bar for additional discovery in IPRs

    April 28, 2014

  • Federal Circuit braced for PTAB “tsunami”

    March 27, 2014

    Concern is growing about how Patent Trial and Appeal Board (PTAB) trials will affect the relationship between the USPTO and Federal Circuit, according to speakers on a panel at the US Patent Forum in Washington DC on March 25

  • Six lessons from the new PTAB in the US

    October 25, 2013

    New procedures for post-grant challenges under the America Invents Act (AIA) can help defendants in patent infringement suits to fight back. But they need to approach it with a very specific strategy

  • Lessons for patent owners from the first year of inter partes review

    October 23, 2013

    Most claims are being accepted for trial and Delaware seems reluctant to grant stays: Scott Alter, Walter Linder and Robert O’Loughlin explain these and other conclusions from the first year of inter partes review petitions in the US

  • Inter partes review: Benefits for innovators and generic challengers

    September 01, 2013

    Dana Lau and Robert S Schwartz of Fitzpatrick Cella Harper & Scinto consider the effects of new inter partes review and supplemental examination procedures in the United States

  • SAP v Versata decision threatens business method patents

    June 13, 2013

    Business method patent owners were dealt a blow this week after the PTAB confirmed it will assume the “broadest reasonable interpretation” of a patent when considering if its claims are too far-reaching under new post-grant challenge proceedings

  • Should you use post-grant opposition in the US?

    May 28, 2013

    The America Invents Act gives challengers more ways to attack a patent post-grant, but the challenger may have to hit a “moving target”

  • How to tackle new US proceedings

    March 25, 2013

  • Trends begin to emerge in USPTO post grant systems

    February 25, 2013

    As of February 22, there have been 142 petitions for inter partes review (IPR) and 15 petitions for post grant review of covered business methods (CBM) filed at the USPTO – but how are they being decided? And what effect have they had on litigation? Eileen McDermott investigates

  • First CBM case offers hope for alleged infringers

    February 25, 2013

  • The US post grant opposition system assessed

    October 26, 2012

    New rules allow third party patent stakeholders to challenge granted patents in the US. Who has been taking advantage of the changes?

  • Judge James Smith, USPTO: Best time ever to be a chief judge

    July 13, 2012

    James Donald Smith, chief administrative law judge of the USPTO’s Board of Patent Appeals and Interferences, says his biggest challenges are tackling the Board’s backlog and preparing for America Invents Act implementation

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