(as published by Law360) On Feb. 19, 2019, the U.S. Supreme Court heard oral argument in Return Mail Inc. v. U.S. Postal Service. The question before the court was whether the government is a “person”...
In the 2017 precedential decision General Plastic Co. v. Canon Kabushiki Kaisha, the PTAB established a set of seven non-exclusive factors that it will consider in exercising its discretion under 35 U...
(as published by Westlaw IP Journal) In Travel Sentry Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017), the U.S. Court of Appeals for the Federal Circuit shed some light on how to apply the divided infri...
While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces...
In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recen...
(as published by DesignNews) When considering intellectual property protection, businesses often overlook the value of design patents and trade dress rights. Products may have ornamentation and/or vis...
This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. Th...
(as published by Bloomberg Law) Section 311(b) of the America Invents Act (“AIA”) provides that a petitioner for inter partes review (“IPR”) may request cancellation of one or more claims of a patent ...
One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope o...
(as published by ITC TLA) DBN Holding, Inc. v. Int’l Trade Comm’n, No. 2017-2128, 2018 WL 6181653 (Fed. Cir. Nov. 27, 2018) Summary: In a non-precedential opinion, the Federal Circuit held that the Co...
(as published by business.com) In most situations, a patent is the only way to deter a competitor from taking and using a company’s innovations. However, there are many aspects of patent law that are ...
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a December 2018 Response to USPTO Request for Comments on motion to ame...