McDermott Will & Emery
Subscribe to McDermott Will & Emery's PostsNavigating the Interplay Between the ITC, PTAB and District Courts
By McDermott Will & Emery on Jun 3, 2021
Posted In Patents
Recent changes in intellectual property law in the US International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and federal US District Courts have had major impacts on litigation strategy and business operations. Within these venues, key changes often run parallel to each other, and understanding and maximizing the interplay between them is...
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PTO Rules Not Subject to the Paperwork Reduction Act
By McDermott Will & Emery on May 27, 2021
Posted In Patents
The US Court of Appeals for the Ninth Circuit concluded that certain challenged rules of the US Patent and Trademark Office (PTO) that relate to the patent application process do not violate the Paperwork Reduction Act (PRA) because each called for a response to an individualized communication; a category which is expressly exempted from the...
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Arthrex Argument May Be Available in Round Two
By McDermott Will & Emery on May 20, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that a party did not waive the Patent Trial & Appeal Board’s (Board) constitutionality argument by raising it for the first time in its opening brief because the Court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc. was issued after the party sought rehearing....
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No Second Bite at the Apple: Injury Must Be Imminent and Non-Speculative to Support Standing
By McDermott Will & Emery on Apr 15, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit ruled that a party did not have Article III appellate standing to obtain review of a final ruling of the Patent Trial & Appeal Board because the underlying district court proceedings had been dismissed with prejudice after a settlement and license agreement were reached. Apple Inc....
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Thank You to Our Readers
By McDermott Will & Emery on Mar 31, 2021
Posted In Trademarks, Uncategorized
We greatly appreciate our readers over the past year and are pleased to share that we were recently recognized for our intellectual property thought leadership in the 2021 JD Supra Readers’ Choice Awards, which acknowledge top authors and firms for their thought leadership in key topics during all of last year. Sarah Bro, a regular contributor to...
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No Estoppel in the Name of Different Interests and Claims
By McDermott Will & Emery on Mar 17, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that 35 USC § 314(d) did not bar its review of a Patent Trial & Appeal Board determination that a petitioner was not estopped from maintaining inter partes review (IPR) proceedings since the alleged estoppel-triggering event occurred post-institution. Uniloc 2017 LLC v. Facebook Inc., Case...
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Collaterally Estopped: Do Not Re-Examine the Same Issues
By McDermott Will & Emery on Mar 4, 2021
Posted In Patents
In an appeal from an inter partes re-examination of a patent having both original and newly presented claims, the US Court of Appeals for the Federal Circuit ruled that a decision in earlier inter partes reexaminations of related patents had a preclusive effect that collaterally estopped the Patent Trial and Appeal Board from making new...
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Attempts to Appeal Institution Decision Is SIPCOed
By McDermott Will & Emery on Feb 18, 2021
Posted In America Invents Act, Patents
Reinforcing the impact of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the US Court of Appeals for the Federal Circuit reiterated that the Patent Trial and Appeal Board’s threshold determination as to whether it will institute a proceeding under the America Invents Act (AIA), in this instance a Covered...
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If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice
By McDermott Will & Emery on Feb 11, 2021
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board cannot sua sponte invalidate a claim as anticipated under § 102 unless that specific statutory ground had previously been...
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PTO: Board to Align Indefiniteness Approach in AIA and District Court Proceedings
By McDermott Will & Emery on Jan 21, 2021
Posted In America Invents Act
On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent Trial and Appeal Board to align the Board’s approach when deciding indefiniteness issues under 35 USC § 112 in America Invents...
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