The Post-Grant Strategist

Uniloc 2017 v. Hulu: Federal Circuit Says PTAB’s Review of Substitute Claims Is Not Limited to Anticipation and Obviousness

No Pain Relief at the PTAB: Inherent Obviousness

COVID-19 Changes How Some Courts Consider Motions to Stay Pending IPR

Hulu v. Sound View: The PTAB Sets New Precedent on How to Prove a Reference Is a Printed Publication

Appearing Before PTAB During COVID-19: What You Need to Know

The Supreme Court Says the PTAB, Not the Federal Circuit, Gets to Say Whether an IPR is Outside the One-Year Time Bar

The Federal Circuit Slams the Door Closed On Same-Party Joinder

Using Prosecution History in IPR: What You Say May Come Back to Help You

Indefinite, but Obvious and Anticipated? Federal Circuit Tells PTAB Certain Indefinite Claims May Be Anticipated or Obvious

The Federal Circuit Giveth, And The Federal Circuit Taketh Away

Supreme Court Oral Argument Review: The Justices Appear Split in Thryv v. Click-to-Call

The Federal Circuit Provides a Roadmap for Using Articles in IPR

Can Amendment Save Your Claims in IPR?

Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully

Supreme Court Preview: What Can a Patent Owner Do When the PTAB Institutes an IPR That the Statute Doesn’t Permit?

What’s Estoppin’ You? – Beware the Barriers of Asserting Judicial Estoppel

IPR Estoppel May Apply to Product-Based Defenses

Federal Circuit Declines to Take Up Winning-Petitioner Estoppel

In Follow-On IPR Petitions, Different Prior Art May Not Be Considered Substantially Different

PTAB Panel Denies IPR Institution Under § 314(a) in View of Parallel District Court Litigation

The Internet is Forever: Costs of Oversharing Online

Did I Say That? The Narrow Divide Between § 102 and § 112 Arguments

Isn’t it Obvious to Optimize for Better Results?

To Prove a Printed Publication, Petitioners Should Connect All the Dots

The Patent Office POPs the Door Open for Same-Party Joinder

Lack of Redundancy May Not Be Enough to Justify Follow-On Petitions for IPR

Petitioner Beware: Inconsistent Claim Construction Positions Can Doom a Petition

Be Careful What You Wish For Post-SAS

All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All

Motions to Amend: The Board Invites Alice to the IPR Party

Non-Prior Art Evidence of the Prior Art? The Federal Circuit Says It May be Okay

Who Bears the Burden in IPR? It Depends on the Argument

Who Will Be Left Standing?  The Constitutional Requirements for IPR Appeals

BRI vs. Phillips Standard: “Treating” Definitions with Care

Don’t Forget the Specification When Applying BRI

A Printed Publication May Be More Than Just a Label

For Indefiniteness Challenges in District Court, Don’t Forget What You Said in IPR

Big Changes Come to Post-Grant Trials: Claim Construction Standards and SAS

SAS Institute: A Refresher on the “Other” IPR Case at the Supreme Court

The End of Days for IPRs? A Refresher on Pending Supreme Court Decisions

Federal Circuit Says: Mind the “Plainly Obvious” Gap

Is Live Testimony a Dead Issue at the PTAB?

In IPR Petitions, Paste Makes Waste

Discretionary Denial: Even the “Best” Prosecution Prior Art May Not Be Right for an IPR

PTAB Left to Mitigate the Damage from Collateral Estoppel

For PTAB Declarations, Better to Fly Solo

Proving Them Wrong: FDA Skepticism Helps Save Patent Claims

One Missing Link Can Break an Obviousness Argument

Tipping the Scales in IPR with Effective Expert Testimony

PTAB Says Yes to (Pro)Drugs

Supreme Court May Let IPRs Continue

PTAB Continues to Draw a Hard Line on Printed Publications

Supreme Court Suggests a Partial Solution to Partial Institutions

Taking the Lead – Small Molecule Nonobviousness

Don’t Regift Prior Art (or Arguments) to the PTAB

Legislation to Curtail Sovereign Immunity in IPR May Be On the Way

Addressing Issues Inherent to Inherency

Can I Get A Witness—With the Right Experience at the Relevant Time?

Shifting Seas in Aqua Products as the Federal Circuit Eases the Burden of Amendment in IPR

ITC v. PTAB: Is Winning in IPR Enough to Avoid an ITC Exclusion Order?

Excusable Neglect? Missing the Appeal Deadline is Not Good, But May Not Be All Bad

PGR: To Wait or Not to Wait for IPR?

Sovereign Immunity Again Applied to IPR

Estop Confusing Us: District Courts Take Wildly Different Views on IPR Estoppel

Duck Salad: Don’t Let Claim Preambles Get Lost in the Weeds

To Modify or Not to Modify, That is the Question

Going (Way)back to the Future of Printed Publications

Tough to Stomach: Differences in Kind and Differences in Degree

Sovereign Immunity Reigns in IPR Again

Patent Owners, Get Your Story Straight at the PTAB

Due Process: Just How Much Process is Due?

Who Knows Whether Something Is a "Printed Publication?" The PTAB Knows!

In IPRs, Section 112 Can Play a Critical Role—Even Late in the Game

Magnitude of Comparative Results: What’s Considered Unexpected?

Sweating Bullets Over the Patentability of Ranges

Avoid Ulcers by Crafting a Well-Reasoned Petition

Sovereign Immunity: Takeaways From the First Successful Defense

Sovereign Immunity: A Defense to IPR Fit for a Monarch

PTAB to Petitioners:  Don’t Hold Back

Fighting Fungi: When Comparative Evidence Is A Must

In Prior Art, Don’t Overlook What’s Inherently There

Appeal from IPR? Don’t Count on It

A Double-Edged Sword: What the Immune System and Prior Art Have in Common

Our Most-Read Blog Posts of 2016

Post-Unwired Planet, Are Pending CBMs Safe?

A Rose ‘Whereby’ Any Other Name Would Smell as Sweet to a Petitioner

CBM Review Standard Changes, ‘Complements’ of the Federal Circuit

To Be, or Not to Be? Shakespeare and CBMs

Opting for PGR Over IPR: A Cautionary Tale

The AIA Turns Five: A Retrospective

Generics Go Three for Three at the PTAB in Multiple Sclerosis Blockbuster Dispute

Claim Amendment Déjà Vu All Over Again?

When the Board Decides “Maybe”

Section 112 Challenges Alive and Well at the PTAB for Functional Antibody Claims

Board Lets Some of the Air Out of Purge Valve Patent

Functional Claiming at the PTAB: A Lose-Lose Situation?

Cuozzo: The Case That Wasn’t

Early IPRs Challenging Biologic Patents: What We Know

PTAB: Individuals and Persons are Humans, Too

For Biologics and Biosimilars, Don’t Forget Post-Grant Proceedings

At the PTAB, First Time’s the Charm

IPR Gets Its Day at the High Court

In Design Patents, A Picture May be Worth a Thousand Words

Reissue Applications: Down, But Not Out

PTAB Shows Its Limits in Applying the BRI Standard

The BRI Standard: An Unconstitutional Taking of Private Property?

When One Door to an IPR Proceeding Closes, Another Opens

Final Amendments to PTAB Trial Rules in Effect May 2

PTO and Cuozzo Engage in War of Words Before Supreme Court

Federal Circuit Orders the PTAB to Play Fair

The PTAB Waits for No One—Certainly Not the Supreme Court

Better Late Than Never, But Never Late Is Better

PTAB v The Untouchables: Widely Validated Biotech Patent to be Reviewed

Update from February PPAC Meeting

“The Internet Ate My Petition” Excuses Won’t Fly with the PTAB

An NPE Uses an IPR to Take a Bite Out of Apple

Looking Back: 2015 at the PTAB

Supreme Court to Decide Claim Interpretation. But Until Then, What?

The Easiest Way to Amend Claims in a Post-Grant Proceeding…

PTO’s Request to Congress Could Make IPRs Even Less Friendly to Patent Owners

The PTAB Chooses Its Own Adventure

Objection! Yes, You Should Consider It

Patent Owners: Amendment Practice Without a Crystal Ball

Does New Matter in a Reply Declaration Still Matter?

Winning at the PTAB Can Be a Real Loser

Petitioners: Amendment Practice Without a Crystal Ball

Cuozzo Cert. Petition Seeks Fundamental Shift in IPR Procedure and Strategy

Bass Gets a Bite

PTAB’s October 1 Boardside Chat Recap

Estop or Go at the PTAB

Board Opens the Floodgates to Let Bass Through

Petitioners: Six Pitfalls to Avoid in IPRs

Redundancy: Can Déjà Vu All Over Again Help Your IPR?

Commentaries on the Laws of PTAB

Is It a Printed Publication? It Depends…

How High is the Evidentiary Hurdle for IPR Institution?

Board Tells Bass to “Go Fish”

Kyle Bass Doubles Down: New IPR Petitions Filed

Broadest Reasonable Interpretation: Not As Broad As You Might Think

PTO Releases Long-Awaited Rule Package

Kyle Bass to PTAB: Greed is Good

PTAB’s Boardside Chat Recap

Patent Owner Goes Fishing for Sanctions in Bass IPR Saga

The Tide is Turning: Changes to Come in Amendment Practice

The Significance of Trial (and Error)

A Kinder, Gentler Face for the Patent Death Squad?

Federal Circuit Reluctant to Second-Guess PTAB in CBMs, But Asserts the Right to Do So If Warranted

Effective Strategies for Petitioners in IPRs

Federal Circuit: Don’t Like the BRI Standard? Blame Congress

Battle Lines Drawn in Hedge Fund IPR Row

With Request for Discovery, Patent Owner Hopes to Fry Bass

Location, Location, Location: How Filing a Declaratory Judgment Action May Affect IPR

PTAB Tells Apple “OMG, TMI”

What Should GCs Look for in Outside Counsel for IPRs?

We Can't Stay So You Should Go Now

The PTAB Is Not Always Right: Federal Circuit Partially Vacates PTAB Decision

Patent Owners: Look Out for These 5 Mistakes Petitioners Make in IPRs

Patent Owners to Bass: Something Smells Fishy

PTAB Once Again Says No Sideshows, Please

Reissue? That’s Quick!

Come Fly the Friendly Skies (Friendly to Petitioners, That Is)

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