This article was published in February 2020 issue of IP Strategist. Copyright © 2020 ALM Media Properties, LLC.  It is republished here with permission.

The U.S. Supreme Court is set to determine just how “final and nonappealable” a decision to institute an inter partes review is. The highest court is primed to render yet another opinion related to patent and administrative law in Thryv, Inc. v. Click-to-Call Techs., L.P., No. 19-916 (2019) after oral arguments were heard on Dec. 9, 2019.
Continue Reading Do Not Pass Go? U.S. Supreme Court to Review Federal Circuit’s Finding of Justiciability

MTD Products Inc. v. Iancu, Appeal No. 2017-2292 (Fed. Cir. August 12, 2019)

MTD had a patent for steering and driving systems for zero turn radius vehicles, such as lawn mowers.  The patent was challenged in IPR, where the Board had to construe the claim term “mechanical control assembly … configured to” perform a function.  The Board construed the term as not being governed by 35 U.S.C. §112, ¶6, and held the claims to be obvious.


Continue Reading Federal Circuit Vacates a Board Decision for Failure to Construe a Term as a Means Plus Function Limitation

A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law firm experience, appears to have brought a different perspective than that of his corporate predecessors – Michel Lee (Google) and David Kappos (IBM) – to the job at the helm of the USPTO.  In his Senate confirmation hearings, Iancu made it clear that he felt that better balance was needed in the administrative review of issued patents by the USPTO under the America Invents Act (AIA).   He pledged to assess “improvements in the AIA trial standards and processes.”  Iancu identified “institution decisions, claim construction, the amendment process, and the conduct of hearings” as areas that warranted study.  In fact, Director Iancu did a lot more than study these aspects of practice before the Patent Trial and Appeal Board (PTAB) in 2018.
Continue Reading Year in Review: Changes in PTAB Practice in 2018