Publications
November 4, 2019 – ArticleObviousness Rejections Based On Inherent Properties Require Evidence
July 17, 2019 – ArticleUSPTO Publishes its Second PTAB Trial Practice Guide UpdateOn July 16, 2019, the Patent Office published its 2019 Trial Practice Guide Update, a copy of which can be found here. This follows on the heels of last August's Trial Practice Guide Update (here) which, perhaps most importantly, provided patent owners with a sur-reply to petitioner's reply brief as a matter of right. More
May 17, 2019 – ArticlePTAB Continues to Expand its Discretion to Deny IPR Review: Do Petitioners Really Have One Year From Service of a Complaint to get Their IPR on File?
May 9, 2019 – ArticlePTAB Issues Two New Precedential Opinions On Discretion to Deny Review - Implications for GenericsThe PTAB designated two decisions as precedential this week (in addition to several in previous weeks), both relevant to the Board's discretion to deny review. These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. See my previous posts on other recent precedential decisions here and here. More
April 17, 2019 – ArticlePTAB Issues Three New Precedential Opinions On RPIThe PTAB designated three decisions as precedential yesterday (in addition to several in previous weeks). These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
April 8, 2019 – ArticlePTAB Designates Huawei Device v. Optis Cellular Tech. as Precedential
April 3, 2019 – ArticleNo Retroactive IPR Estoppel in Co-Pending Litigation
March 27, 2019 – ArticleA Derivation Proceeding is not Just a Derivation Interference by Another Name!
March 20, 2019 – ArticlePTAB Issues Three New Precedential OpinionsThe PTAB designated three decisions as precedential this week (in addition to two earlier this month), indicating that the PTO may be in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
March 14, 2019 – ArticlePTAB Precedential Opinion Panel Clarifies Issue Joinder Under 35 U.S.C. § 315(c)In the first case to be taken up by the PTAB's Precedential Opinion Panel (POP), Director Iancu, Commissioner Hirshfeld, and then Acting Chief Judge Boalick (now appointed) have determined that, under appropriate and limited circumstances, a petitioner may join its own previously-instituted IPR to request joinder and institution of new issues. More
March 11, 2019 – ArticleMotions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital?Spring gardening season has begun and the USPTO is once again planting its Motion to Amend ("MTA") seeds. In a substantial redux of Western Digital Corporation v. Spex Technologies, IPR2018-00082, -00084, paper 13, the PTAB this past week designated paper 15 of Lectrosonics v. Zaxcom, IPR2018-01129, 01130("Lectrosonics Order") as an informative decision. More
February 5, 2019 – ArticleRealtime Data, LLC, v. Iancu: No Requirement to Make Any Finding of a Motivation to Combine Two References When a Claim is Invalid as Being Obvious Over a Single ReferenceThe Federal Circuit affirmed the Patent and Trademark Appeal Board's (PTAB) determination that all of the challenged claims of Realtime's U.S. Patent 6,597,812 ("the ‘812 patent") would have been obvious over the prior art. More
February 1, 2019 – ArticlePTAB Rules That Section 101 Rejections Are Proper When Raised As Part Of An IPR Motion To AmendIt is quite common for IPR petitioners to raise § 112 defenses in opposition to a motion to amend filed by the patent owner. What's less common is for the petitioner to argue that the proposed amended claims fail to recite patentable subject matter under § 101. More
October 10, 2018 – ArticleFinal Rule Change Replacing BRI with Phillips Standard
June 18, 2018 – ArticleDecs, Slides, and Video[tape]: Utilizing non-patent literature in IPR
June 18, 2018 – ArticleWho's Kidding Who?
June 4, 2018 – ArticleDoes the PTAB's Western Digital Order Move the Needle?
April 6, 2018 – ArticleOblon Attends Business Methods Partnership Meeting
March 13, 2018 – ArticleIs Sovereign Immunity Dead with Respect to PTAB Proceedings?
February 9, 2018 – ArticleRasuvo Patent Survives IPR: Failure to Properly Frame Arguments Proves Fatal
January 29, 2018 – ArticleAnything you say can and will be used against you - As Illustrated in a Recent FRAND Rate-Setting Case
January 4, 2018 – ArticleJust Say No to Amending Patent Claims in an IPR with Concurrent Litigation
December 12, 2017 – ArticlePatentees must Exercise Reasonable Efforts to ensure that Licensees are Complying with the Marking Statute
November 28, 2017 – ArticleSupreme Court Hears Oral Arguments in Oil States Energy Services, LLC. V. Greene's Energy Group, LLC
November 28, 2017 – ArticleSupreme Court Hears Arguments in SAS Institute, Inc. v. Joseph Matal
August 11, 2017 – ArticleWill TC Heartland Control Venue in BPCIA Litigation?BNA’s Patent, Trademark & Copyright Journal
April 21, 2017 – ArticlePatent Enforcement at Trade Shows in the United States The Best Tools for the JobBNA’s Patent, Trademark & Copyright Journal
August 5, 2016 – ArticleWhat's the Point of Observations and Responses?Bloomberg BNA
June 10, 2016 – ArticleThe Solicitor's Office Should Monitor District Court Reviews of Decisions by the PTAB and the TTAB Intervene When AppropriateBNA's Patent, Trademark & Copyright Journal
May 6, 2016 – ArticleNow Holmwood v. Sugavanam Applies to Patent Attorneys!BNA’s Patent, Trademark & Copyright Journal
April 2, 2016 – ArticleDroit américain des brevets : son fondement constitutionnel est-il d'inspiration française ?Revue Francophone de la Propriété Intellectuelle
April 1, 2016 – ArticleWere the Death Squads' Created in 1980?Bloomberg BNA
February 20, 2015 – ArticleThe Suprema Federal Circuit En Banc Hearing: The Full Court's Decision May Impact the ITC's Remedial Authority
January 12, 2015 – ArticleAre Questions Of Fact Being Overlooked In Software Cases?Law360
October 16, 2014 – ArticleThe PTAB's Primer for Derivation ProceedingsIP Today
June 25, 2014 – ArticleAereo Decision: When Innovation Looks Like ImitationLaw360
June 17, 2014 – ArticleAn Exceptional Decision: The ITC Stays Cease and Desist Orders Issued in the Dental Position Adjustment Appliances Investigation
May 20, 2014 – ArticleFull Federal Circuit Vacates Panel Decision in Suprema and Grants Petitions for Rehearing En Banc
April 30, 2014 – ArticleFederal Circuit Rules No Per Se Prohibition Against Injunctions for FRAND-Encumbered Standard Essential Patents
April 21, 2014 – ArticleThe ITC Has Jurisdiction Over Digital File Transmissions Under Section 337
April 7, 2014 – ArticleThe Federal Circuit Considers Petitions for Rehearing Suprema Its Decision Defining The ITC's Authority to Police Induced Infringement
March 5, 2014 – BookThe Supreme Court on Patent LawCo-Author, Chapter 4 (Claim Construction)
January 2013 – ArticleIs The Estoppel Of The New AIA Proceedings Worse Than Interference Estoppel?20 Intellectual Property Today No. 1 at page 8
December 2012 – ArticleWill PTAB Decisions In Interferences Declared After September 15, 2012 Be Reviewable In Court?19 Intellectual Property Today No. 12 at page 32
November 2012 – ArticleDon't Forget That Inventorship Issues Can Be Determined in an Interference!85 PTCJ 115
November 2012 – ArticleIs The Definition Of "Same Or Substantially The Same" In 37 CFR 42.401 Valid?19 Intellectual Property Today No. 11 at page 32
September 2012 – ArticlePost-Grant Proceedings Before the Patent Trial and Appeal BoardPost-Grant Proceedings Before the Patent Trial and Appeal Board
September 18, 2012 – ArticleDo You Have To Write Your Motions Before You Submit Your List Of Proposed Motions?19 Intellectual Property Today No. 9 at page 16
August 2012 – ArticleProposed Technical Amendments To § 135 Of The AIA19 Intellectual Property Today No. 8 at page 8
Jan 2003 – ArticleA Critique of Recent Opinions in Patent Interferences85 JPTOS 401
