Eagle Robinson (US)

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USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials

By Eagle Robinson (US) on May 9, 2018 Posted in Claim construction, General

In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials. In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) … Continue reading

More SAS: PTAB “May” Revoke Institution in Some Pending Trials

By Eagle Robinson (US) on April 30, 2018 Posted in General, Institution decisions

The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute … Continue reading

PTAB Feeling SASsy: Institutions to Include “All Challenges”

By Tom Owens (US) and Eagle Robinson (US) on April 29, 2018 Posted in General

The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all … Continue reading

USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews

By Eagle Robinson (US) on April 24, 2018 Posted in General

In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v Greenes Energy Group, LLC, 584 U.S. ___, No. 16-712 (2018). In a 7-2 decision authored … Continue reading

Board denies patent owner’s request to file motion to vacate Final Written Decision

By Eagle Robinson (US) on December 10, 2014 Posted in General

In Salesforce.com, Inc. v. VirtualAgility, Inc., the PTAB refused to permit the Patent Owner to file a motion to vacate the Final Written Decision, even though the parties settled while an appeal to the Federal Circuit was still pending. CBM2013-00024, Paper 52 (Nov. 24, 2014). The Board held in the CBM Review that all challenged … Continue reading