In Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., Samsung SDI argued that the Patent Trial and Appeal Board (PTAB)’s final written decision was improper on several grounds and petitioned the Director to review the decision. The Director granted Samsung SDI’s request regarding the argument that the PTAB should have separately considered two claims that had an earlier priority date and antedated the prior art. The Director thus vacated the PTAB decision

The United States Patent and Trademark Office (USPTO) has announced the Fast-Track Appeals Pilot Program where the ex parte appeal of an application before the Patent Trial and Appeal Board (PTAB) can be expedited by submitting a petition fee of $400. The pilot program aims to provide a decision on the appeal within 6 months of the date that the appeal is entered into the pilot program. The program will be available until 500 petitions are granted fast-track status (with a l

The Patent Trial and Appeal Board designated as informative an institution decision that granted post-grant review of a design patent for lacking ornamentality. Sattler had argued that the overall design of the mount adapter bracket covered by Humancentric's U.S. D823,093 patent was functional rather than ornamental. While 35 U.S.C. § 171(a) states that a design patent may be obtained for "any new, original and ornamental design for an article of manufacture," "a design pat

The Patent Trial and Appeal Board designated this decision to institute an inter partes review as precedential. In this case, the Board declined to exercise discretion to deny institution under 35 U.S.C. 325(d) because there was "new, noncumulative prior art in asserted in the Petition." The Board also declined to exercise discretion to deny institution under 35 U.S.C. 314(a) because "[the] Patent Owner seems to acknowledge that the Board proceeding would not be directly dupl

The Patent Trial and Appeal Board on March 24, 2020 designated as precedential this decision denying institution of the inter partes review and explained that the Board utilizes a two-part framework in determining whether or not to exercise discretion under 35 U.S.C. 325(d). 35 U.S.C. 325(d) states "[i]n determining whether to institute or order a proceeding..., the Director may take into account whether, and reject the petition or request because, the same or substantially t

The Patent Trial and Appeal Board held that a certificate of correction could not be applied retroactively. The patentee petitioned to correct a claimed priority date in order to remove as prior art a patent that the Board had relied on to invalidate all of the challenged claims. The certificate did not issue until months after the Board's final written decision. On remand from the Federal Circuit, the Board held that a certificate of correction could only apply prospectivel

Federal Circuit does not have jurisdiction to review a challenge to a decision by the Patent Trial and Appeal Board (PTAB) where the appeal originates from the district court's adoption of the PTAB decision. Jurisdiction to review a challenge to a PTAB final written decision is exclusively with the Federal Circuit. Read the case here. #PTAB #IPR