Posts in Patents


The PTAB’s dramatic effect on patent value and corresponding disincentives to capital allocation

Whether one celebrates or decries the PTAB, there can be little doubt that it has worked a profound effect on the value of American patents—and, concomitantly, …
By Ashley Keller
7 days ago 28

The failed PTAB experiment has been a colossal mistake

The five year experiment of the Patent Trial and Appeal Board (PTAB) is a colossal mistake. It is a failure to inventors, startups, early stage investors, job …
By Paul Morinville
7 days ago 16

Federal Circuit Reverses and Remands Dismissal of Direct and Indirect Infringement Claims

A party need not prove its infringement case with detailed facts at the pleadings stage. For direct infringement, it is sufficient to identify where the alleged infringement …

Federal Circuit says Secondary Considerations Not Part of Prima Facie Obviousness Analysis

Objective indicia must be evaluated before drawing an ultimate conclusion on obviousness, but are not necessarily part of a prima facie “motivation-to-combine” analysis. To prove inequitable conduct …

Conservatives’ Letter to U.S. Senate Says Preserve Bayh-Dole

Though aimed at certain pharmaceutical products, Sens. Angus King’s and Bernie Sanders’ potential amendments would throw the key to the Bayh-Dole Act’s success —certainty and …
By James Edwards
7 days ago 0

USPTO Update from John Cabeca, Silicon Valley Director

One area the Office is reviewing is in the area of Examiner Time Analysis. The Office hasn’t changed the classification of applications (i.e., complex versus …
By Gene Quinn
8 days ago 5

The Increasingly Powerful PTAB: Underutilized Precedential Designations Undermines Efficiency and Consistency

The PTO has increased the number of Board decisions as being precedential (so as to serve as a binding authority) by 36% within the last two years. With …

Crossing the Chasm: Avoiding and Surviving the PTAB

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of …

EPO ready for the first Unitary Patent as soon as the ratification requirements are met

One of the great aspects of the Unitary Patent is that it follows the normal EPO procedure up to grant. And indeed, the search and the examination …
By Gene Quinn
8 days ago 0

A review of enhanced damages since Halo: Minimizing potential exposure to enhanced damages

Since the Supreme Court’s decision in Halo, there have been approximately 100 cases analyzing whether the adjudged infringer acted egregiously/willfully en route to a determination of …
By Theodore Chiacchio
8 days ago 0

How the New USPTO Director Can Impact Patent Subject Matter Eligibility and Post-Patent Grant Challenge Proceedings

As the challenge proceedings and the Patent Trial and Appeal Board mark their fifth anniversary, we should reflect on whether they have achieved their intended purpose. About …
By Manny Schecter
9 days ago 3

Patent owners negatively impacted by PTAB file amicus brief with SCOTUS in support of Oil States

A few dozen amici briefs have been filed in the case, including one filed on August 30th by 39 patent owners affected by PTAB activities in support of …
By Steve Brachmann
9 days ago 3

Mylan calls Allergan’s patent deal with Indian tribe a “sham” transaction in PTAB hearing on sovereign immunity defense

The tribe is raising a sovereign immunity defense in the case as the tribe is a sovereign entity which is not amenable to a suit unless it …
By Steve Brachmann
9 days ago 12

A Review at Five Years of Inter Partes Review

Post grant procedures can be an effective and efficient way of promoting patent quality by invalidating weak, inappropriately granted patents. What we need now is thoughtful review …
By Robert Stoll
10 days ago 18

Lessons from Five Years of PTAB Trials

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the …
By Jennifer Bush
10 days ago 40