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Full-Text Articles in Law
Precedential Decisions At The Ptab: An Endangered Species?, Robert M. Yeh Ph.D
Precedential Decisions At The Ptab: An Endangered Species?, Robert M. Yeh Ph.D
Chicago-Kent Journal of Intellectual Property
This Article describes the USPTO’s practice of designating certain opinions as precedential, informative, or representative and compares it to the practice of issuing precedential opinions at other agencies that conduct quasi-judicial proceedings. The Article explores the impact of these agency practices on stare decisis. It concludes that the USPTO should simplify its designation process, increase the number of precedential opinions, and by doing so improve consistency and predictability.
Ptab Precedential Decision: Putting The Hammer Down On Filing Serial Petitions?, Ashley N. Klein, Warren J. Thomas
Ptab Precedential Decision: Putting The Hammer Down On Filing Serial Petitions?, Ashley N. Klein, Warren J. Thomas
Chicago-Kent Journal of Intellectual Property
Petitioners for inter partes review proceedings under the America Invents Act routinely file serial petitions to challenge a single patent. Patent owners have criticized such “follow-on” petitions as abusive. The Patent Trial and Appeal Board’s recent precedential opinion in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017), lays out seven non-exhaustive factors to guide the Board’s consideration of such “follow-on” petitions. This Article summarizes the Board’s analysis of follow-on petitions prior to General Plastic, examines how General Plastic has affected petitioners’ success in having such petitions instituted, and suggests strategies for practitioners …
Are There Really Two Sides Of The Claim Construction Coin? The Application Of The Broadest Reasonable Interpretation At The Ptab, Paula Miller, Marianne Terrot, Stacy Lewis, Tom Irving
Are There Really Two Sides Of The Claim Construction Coin? The Application Of The Broadest Reasonable Interpretation At The Ptab, Paula Miller, Marianne Terrot, Stacy Lewis, Tom Irving
Chicago-Kent Journal of Intellectual Property
The USPTO has applied the broadest reasonable interpretation (BRI) claim construction standard during prosecution, reexamination, and other office proceedings for decades. The Supreme Court affirmed in Cuozzo Speed Technologies Inc. that BRI is also the appropriate standard for unexpired claims in post-grant proceedings at the Patent Trial and Appeal Board (PTAB). Leading up to Cuozzo, many parties speculated that the PTAB’s application of BRI might create confusion and result in inconsistent outcomes at the district court level. Notably, nothing in the America Invents Act establishes a standard of deference between PTAB and district court decisions. But so far, there has …
To Stay Or Not To Stay Pending Ipr? That Should Be A Simpler Question, Joel Sayres, Julie Wahlstrand
To Stay Or Not To Stay Pending Ipr? That Should Be A Simpler Question, Joel Sayres, Julie Wahlstrand
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Without Clear Rules, Ptab Practices May Run Afoul Of The Apa, Arpita Bhattacharyya, Rachel L. Emsley
Without Clear Rules, Ptab Practices May Run Afoul Of The Apa, Arpita Bhattacharyya, Rachel L. Emsley
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Master Of The Petition: Exploring The Tension Between The Ptab And Petitioners In Controlling The Scope Of Aia Trials, Raja N. Saliba, Grant Shackelford
Master Of The Petition: Exploring The Tension Between The Ptab And Petitioners In Controlling The Scope Of Aia Trials, Raja N. Saliba, Grant Shackelford
Chicago-Kent Journal of Intellectual Property
No abstract provided.