Institution

Subscribe to Institution

March 13, 2018, marked the fifth anniversary of the transition from the previous “first to invent” system to the AIA’s “first to file” regime.  The PTAB seemingly marked the occasion by instituting the first ever derivation proceeding one week later in Anderson Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 32 (March 21, 2018).

The concept of “derivation” was not created by the AIA.  Pre-AIA 35 U.S.C. § 102(f) dictated that a person shall not be entitled to a patent if he did not himself invent the claimed subject matter. 
Continue Reading First Derivation Proceeding Instituted by PTAB

stamp denied with red text on whiteWe previously reported on the Federal Circuit’s decision that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions in Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).  Last week, in a 10-1 decision, the Federal Circuit denied Ethicon’s petition for rehearing en banc.
Continue Reading En Banc Rehearing Petition Denied – PTAB Retains Authority to Institute IPR and Issue Final Decision

Split DecisionsThe AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions.  Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).
Continue Reading Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided. Starting Line

Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial.  The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits. 
Continue Reading USPTO Proposes Single APJ Pilot Program for IPR Institution

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

Learn more

Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.