ALEXANDRIA, Va. – January 11, 2022 – Buchanan Ingersoll & Rooney intellectual property attorneys obtained a favorable decision from the U.S. Patent and Trademark Office Patent and Appeal Board (PTAB) on behalf of Hamilton Technologies LLC in an inter partes review patent challenge regarding life-saving mechanical ventilation systems. In its final written decision issued on December 28,
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USPTO Denies First Requests for Director Review of IPR Decisions After Arthrex
As a result of the recent Supreme Court decision in U.S. v. Arthrex, Inc., the USPTO implemented an interim review procedure where review of a PTAB final written decision may be initiated by the Director or requested by a party to a PTAB proceeding. In its first decisions on requests for Director review, the USPTO…
IPRs Survive Supreme Court Scrutiny by Allowing USPTO Director to Review PTAB Decisions
The Supreme Court issued a decision today in U.S. v. Arthrex, Inc. upholding the use of inter partes reviews (IPRs) to challenge the validity of issued patents under the America Invents Act. While the Court determined that administrative patent judges (APJs) of the USPTO’s Patent Trial and Appeal Board (PTAB) were unconstitutionally appointed, the Court fixed the problem by…
Todd Walters to Present USPTO LEAP Webinar
On Monday, April 5, Todd Walters, Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section, will be presenting to members of the United States Patent and Trademark Office’s Legal Experience and Advancement Program (LEAP). The session entitled, “The ‘Perfect’ Oral Argument” will cover how to present an ex parte…
Granted Motions To Amend Rising Under PTAB Pilot Program
On March 15, 2019, the USPTO implemented a pilot program making certain changes to motion to amend practice in AIA trial proceedings. Historically, motions to amend have been filed in only 11% of AIA trial proceedings, demonstrating their lack of popularity. The vast majority of motions, 86%, filed prior to the pilot program were denied. In view of…
PTAB Adopts Nautilus Indefiniteness Standard in AIA Trial Proceedings
The USPTO issued guidance on the standard for addressing indefiniteness in AIA trial proceedings. The PTAB will apply the Nautilus standard in AIA trial proceedings which is the same standard used by district courts and the ITC.
As background, the USPTO historically applies the standard articulated in In re Packard, 751 F.3d 1307 (Fed. Cir.…
USPTO Publishes Final Rule Related to AIA Trial Practice
The USPTO published a final rule relating to AIA trial proceedings before the Patent Trial and Appeal Board (“PTAB”). The final rule addresses three aspects of AIA trial proceedings.
First, the rule formally implements the PTAB’s current guidance concerning the scope of institution in view of the Supreme Court’s decision in SAS Institute. Under current…
USPTO Provides Analysis on the Impact of the PTAB’s Motion to Amend Pilot Program
The USPTO recently issued comments concerning the impact of the PTAB’s motion to amend (“MTA”) pilot program on AIA trials.
The PTAB’s MTA pilot program was implemented in March of 2019. The pilot program provides a patent owner with two options. First, the patent owner can request preliminary guidance from the Board on its MTA. …
New Wave of Patent Litigation Possible After Covered Business Method Review Program Ends
The transitional Covered Business Method (CBM) review program saw its end on September 16, 2020. Under the CBM review program, a party believing that a patent directed to a financial product or service did not cover patentable subject matter (i.e., the invention was directed to a “business method”) could petition the Patent Office to institute…
USPTO Announces Fast-Track Appeals Pilot Program
The U.S. Patent and Trademark Office (USPTO) has announced a Fast-Track Appeals Pilot Program to allow an Appellant to have an ex parte appeal advanced out of turn. The effective date of the program is July 2, 2020. The target is to have a decision on the appeal within six months of entry into the program.…