On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative inferences to find facts against
On March 24, 2022, the Court of Appeals for the Federal Circuit issued a precedential opinion in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, affirming — on a procedural technicality — a precedential decision of a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) that granted a motion to amend claims in an inter partes
For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure agreement (NDA) that expressly
On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still invoke AFCP 2.0 with
In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) (see our prior blog here
On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).
In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside the US.
On December 21, 2020, the US Patent and Trademark Office (Office) published final rules in the Federal Register, implementing the decision in Hunting Titan, Inc. v Dynaenergetics Europe GMBH as follows regarding motions to amend in inter partes review (IPR) and post-grant review (PGR) proceedings:
On December 9, 2020, the US Patent and Trademark Office (Office) published some final rules in the Federal Register. For the most part, these rules codified existing Patent Trial and Appeal Board (PTAB) practice relating to whether and how the PTAB institutes an inter partes review (IPR) or a post-grant review (PGR) proceeding, and to the ability of a petitioner
On October 13, 2020, the U.S. Supreme Court agreed to take up the question of the constitutionality of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA). The Supreme Court will review the decision of the Court of Appeals for the Federal Circuit in what has become well known as the Arthrex case.
Potentially thousands of