An Action-Packed Summer for PTAB

uspto_seal_full_colorBy Don Wang

If you spent this past summer looking forward to the most recent Fantastic Four movie, I am deeply sorry for the utter disappointment. However, if you have been following the news of the Patent Trial and Appeal Board (PTAB) instead, this has been a truly great summer! Following the roll-out of the American Invents Act, the United States Patent and Trademark Office (USPTO) started to solicit public comments for a proposed rule change package for trials before the PTAB and has proposed a pilot program to have a single Administrative Patent Judge determine the institution of an Inter Partes Review. Continue reading

SCOTUS Teva Ruling: Big Splash with Little Impact

bookBy Miriam Swedlow

Despite overruling the Federal Circuit’s prior practice of reviewing all aspects of patent claim construction de novo, the Supreme Court’s ruling in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. has not dramatically changed the standard of review for patent claims. Instead, it imparts a sub-category of analysis in cases where the district court relies upon extrinsic evidence to clarify ambiguous or complicated facts needed for proper claim construction. The court first considers whether the district court relied upon extrinsic evidence and if so, whether it needed to in order to properly construe the claim. As predicted by the Supreme Court, only a small number of cases have required clear error review of fact finding in the months following the Teva decision. Ultimately, clear error review of fact-finding from extrinsic evidence simply adds one step prior to the traditional de novo review applied to patent claim construction.  Continue reading