By: Q. Todd Dickinson and Darren E. DonnellyThe Appointments Clause of the U.S. Constitution[1] provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand, do not require Senate confirmation and the appointment power may be
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How to Get a PTAB Decision Designated Precedential
By: Margaux A. SaveeThis past year, we have seen the Patent Trial and Appeal Board (PTAB) designate a number of decisions as precedential and informative more so than in past years. This is directly a result of the USPTO’s revised Standard Operating Procedure 2 (SOP2). On September 20, 2018, the USPTO announced that Board decisions…
One-Year Time Bar Triggered After the Service of a Complaint, Regardless of Whether the Serving Party Lacked Standing to Sue
By: Margaux A. SaveeOn August 23, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued a precedential opinion relating to the one-year time bar under 35 U.S.C. § 315(b). The POP held, “service of a pleading asserting a claim of infringement triggers the one-year time period for a…
Comparison of Post-Grant Proceedings
By: Margaux A. SaveeThe chart below highlights the differences between the various proceedings available for post-issuance review of patents.
For more information on your options, please contact the author, Margaux A. Savee, or a member of our Post Grant Practice.…
Amendments Through Reissue or Reexamination During a Pending AIA Proceeding
By: Margaux A. SaveeMy previous posts discussed the Board’s new Motion to Amend pilot program for AIA proceedings and the Board’s precedential opinion Lectrosonics Inc. v. Zaxcom Inc., Cases IPR2018-01129, -1130, Paper 15 at 4 (PTAB Feb. 25, 2019) (designated precedential: Mar. 7, 2019) which provides guidance on Motion to Amend practice. But there…
Lectrosonic v. Zaxcom: PTAB Precedent on Motion to Amend Practice
By: Margaux A. SaveeSo you’ve decided to file a Motion to Amend…don’t forget to read this important precedential decision which provides guidance on the requirements for a Motion to AmendLectrosonics Inc. v. Zaxcom Inc., Cases IPR2018-01129, -1130, Paper 15 at 4 (PTAB Feb. 25, 2019) (designated: Mar. 7, 2019)Lectrosonics is a precedential opinion issued by…
Overview of the USPTO’s Motion to Amend Pilot Program
By: Margaux A. SaveeIn light of the many recent changes surrounding Post Grant Proceedings, below is an overview of the most recent changes and their potential impact to your business. Overview On March 15, 2019, the USPTO issued a notice announcing the Motion to Amend Pilot Program. The Pilot Program provides patent owners with two…
Patent Owner Waives Sovereign Immunity in IPR Proceeding by Filing Infringement Suit
By: Margaux Savee An expanded panel of seven patent judges in an IPR proceeding held that the Regents of the University of Minnesota waived its Eleventh Amendment immunity by filing an action in the district court alleging infringement of the same patent challenged in the IPR. LSI Corp. and Avago Technologies U.S. Inc., Case IPR2017-01068 (Dec. 19, 2017).On August 25,…
Summary of Oral Arguments in "Oil States"
By Stephanie J. MoatsThe U.S. Supreme Court asked tough questions during the oral arguments in Oil States Energy Services LLC v. Greene’s Energy Group LLC. This case challenges the constitutionality of inter partes review (IPR), a procedure established under the America Invents Act. The following are 5 themes that came up during oral arguments on Monday:1. Is Oil State’s argument…
PTAB Allows Amicus Brief in Allergan IPRs
By Margaux A. SaveeIn an interesting turn of events, the Board is now permitting amicus briefs in the hotly disputed case between Allergan, Inc. and generic drug makers relating to patents for Allergan’s dry eye drug, Restasis. This appears to be the first time that the Board has allowed amicus briefs in a post-grant challenge.In 2015, Allergan…