Posts in Post Grant Procedures


How is the PTAB Handling Remands from the Federal Circuit? A Survey and Some Practical Takeaways

As of March 17, 2017, the Federal Circuit has remanded 23 post-grant proceedings back to the Patent Trial and Appeal Board (PTAB) for further consideration. But there are no rules …

Federal Circuit reverses PTAB anticipation holding because not every element present in prior art

The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of …
By Gene Quinn
12 days ago 8

Time to Quiet Title for Patents: Fixing the PTAB by Recognizing Patents are Property

While there are many fixes that need to happen to bring about even a modicum of fairness and justice to the PTAB processes, the most important fix …
By Gene Quinn
12 days ago 40

UFRF’s win on Eleventh Amendment at PTAB creates IPR immunity for public universities

Each of the Covidien IPRs challenged the validity of a single patent owned by the University of Florida Research Foundation (UFRF) which the university had previously asserted …
By Steve Brachmann
13 days ago 4

CAFC sides with L.A. Biomedical Research over Eli Lilly in two IPRs challenging penile fibrosis patent

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes …

Federal Circuit reverses PTAB, says CBM patents must be financial in nature according to the claims

The CBM determination includes patents that are “financial in nature” according to the claims; not patents that are “complementary” or “incidental” to financial activity according to the …

SCOTUS invites Michelle Lee to Respond to Oil States IPR related petition for certiorari

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the …
By Gene Quinn
29 days ago 15

The PTAB is a thoroughly broken tribunal incapable of being fixed

One Administrative Patent Judge — Judge Meredith Petravick — dissented. Petravick said it was inappropriate for the PTAB to terminate the '304 patent CBM because the parties were different …
By Gene Quinn
1 month ago 35

Patent owners do not like IPRs despite what Bloomberg Law, AIPLA study says

According to Bloomberg and AIPLA, the survey suggests that complaints from patent owners and other stakeholders in the U.S. patent system surrounding high patent invalidation rates …
By Gene Quinn & Steve Brachmann
2 months ago 31

Michelle Lee’s views on patent quality out of touch with reality facing patent applicants

In the piece, Lee tries her best to assure readers that positive developments have been made at the USPTO in recent years, but at multiple points she …
By Gene Quinn & Steve Brachmann
2 months ago 40

PTAB refuses to institute harassing IPR challenges against Finjan

Recently the Patent Trial and Appeal Board (Board) at the United States Patent and Trademark Office (USPTO) denied institution in two separate inter partes review (IPR) challenges. …
By Gene Quinn
2 months ago 11

Federal Circuit Clarifies Injury in Fact Standing to Challenge Final Agency Decision in IPR

In appealing from a final IPR decision, the appellant must have standing, based on evidence of record or supplemental evidence showing an “injury in fact.” Alleged economic …

Federal Circuit to consider reviewability of IPR institution decisions en banc

In a Per Curiam Order the Federal Circuit granted the petition for en banc rehearing and vacated the court’s three prior opinions in Wi-Fi One v. …
By Gene Quinn
3 months ago 3

Is there an inherent bias against patent owners at the PTAB?

Pedersen doesn’t disagree that the patent system is biased against the patent owner in that “the patent owner has to run the gauntlet,” referring to needing …
By Gene Quinn
3 months ago 5

Seven PTAB policy changes for the next USPTO director

The next Director of the Patent Office will have enormous power to turn things around. He or she can make the currently lopsided system fair to all …