America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
News & Analysis as of

On Sale Bar Invalidates Safyral, Beyaz Folate Patent

In Merck & CIE v. Watson Laboratories, Inc., the Federal Circuit found communications between Merck and a potential joint venture partner amounted to a commercial offer to sell that invalidated the Orange Book-listed folate...more

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

Directory Assistance Call Completion Is Not A Financial Service for CBM Purposes - On May 4, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a Covered Business Method (CBM)...more

Shifts in Amendments at the PTAB

Despite another year of attempts to amend in IPR and CBM, success is still rare. But is a change coming? In the summer of 2015, the PTAB issued its final written decision in REG Synthetic Fuels LLC v. Neste Oil OYJ,...more

Are Ex Parte Reexaminations An Overlooked Method of Challenging Patents?

In the wake of the September 16, 2011, enactment of the America Invents Act (“AIA”), many third-party individuals and organizations began utilizing the newly created post-grant proceedings to challenge the validity of issued...more

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

Intellectual Property Bulletin - Spring 2016

Supreme Court to Weigh In on Damages for Design Patent Infringement - Recent decisions from the U.S. Court of Appeals for the Federal Circuit regarding damages available in design patent cases highlight the court’s...more

DOJ Files IPR Petitions Against Discovery Patents

The U.S. Department of Justice (DOJ) filed six petitions for inter partes review (IPR) of three patents assigned to Discovery Patents, LLC. The patents cover security alarm systems and methods for providing secure real-time...more

PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter...more

PTAB Designates Five Decisions as Precedential

To date, the PTAB has been stingy in its designation of panel decisions as “precedential.” Indeed, before now, only 3 decisions in the AIA era had been designated as precedential. That number increased dramatically on May 10,...more

USPTO Provides Insight on PTAB Amendment Motions

On Monday, May 9, 2016, the U.S. Patent and Trademark Office published information on Patent Trial and Appeal Board (PTAB) trials regarding motions to amend claims. The Acting Chief Administrative Patent Judge, Nathan...more

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

The United States Patent and Trademark Office has used a “broadest reasonable interpretation” (BRI) standard for claim interpretation when examining pending patent applications. Under the BRI standard, a claim term is...more

Congress Finally Agrees: Passes Federal Trade Secrets Act

After years of legislative fits and starts, the U.S. House of Representatives on April 27, 2016, passed a bill federalizing trade-secret law. President Obama is expected to sign the bill in short order. Titled the “Defend...more

Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of...

On April 25, 2016, the U.S. Supreme Court heard oral arguments in its first appeal from a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding (“IPR”) under the...more

New Analyses of AIA Trial Data by Technology

The United States Patent & Trademark Office published new analyses along with its most recent update of AIA Trial Statistics. The update includes data through end of March 2016 and shows “Percent of Petitions Instituted by...more

Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings

On April 26, 2016, the Federal Circuit denied a petition seeking rehearing en banc of its application of the “substantial evidence” standard of review in post-grant administrative proceedings, in the case of Merck & Cie v....more

Qualtrics, LLC v. OpinionLab, Inc. (PTAB 2016)

Focusing on the Claims, the PTAB Denies CBM Review of a Market Research Patent - On April 13, 2016, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) issued a decision denying institution...more

Patent Owners Now Estopped From Relying On PTAB Estoppel

A recent Federal Circuit decision on a writ of mandamus as to the scope of the estoppel provided in 35 U.S.C § 315(e) appears to be contrary to the scope that practitioners and the legislators had in mind when the America...more

It’s Never Too Late to File an Inventorship Dispute

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger...more

Patent Office Issues Final Rule Amending the Rules of Practice for Trials at the PTAB

The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May...more

MoFo IP Newsletter - April 2016

The 2015 Changes to the Federal Rules Matter for Your Patent Case and Tech Business: Getting in the Courthouse Door Just Got Tougher - It used to be that a complaint for patent infringement would survive a motion to...more

"After Period of High Invalidation Rates, New US Patent Challenge Procedures May Slow Down to Moderate Pace"

When the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB) began hearing post-issuance patent challenge proceedings under the America Invents Act in September 2012, the PTAB became one of the...more

5 Things to Know About the Defend Trade Secrets Act

Unanimous Senate approval of the federal trade secrets bill creates momentum for a new cause of action. After nearly a year-long delay, the Senate on April 4, 2016, unanimously passed the Defend Trade Secrets Act (DTSA),...more

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

USPTO Publishes Substantive Changes to PTAB Rules

On April 1, 2016 the USPTO published the final rules that make substantive changes to the Patent Trial and Appeal Board (PTAB) trial practice rules for inter partes review (IPR), covered business method (CBM), and post-grant...more

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