News & Analysis as of September 22, 2024

America Invents Act › Expert Testimony

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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 -

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Experts and Expert Testimony in PTAB Proceedings

Jones Day on 9/28/2022

In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that...more

ImmunoGen, Inc. v. Hirshfeld (Fed. Cir. 2022)

McDonnell Boehnen Hulbert & Berghoff LLP on 3/31/2022

One of the casualties of the Leahy-Smith America Invents Act in 2012 was 35 U.S.C. § 145, which had provided recourse to U.S. District Courts for U.S. patent applicants disgruntled with a determination of unpatentability...more

PGR Challenge to Genus Claims Fails Because of Enabling Disclosure of Species in Pre-AIA Priority Applications

Akin Gump Strauss Hauer & Feld LLP on 3/16/2022

The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2022

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Qiagen North America Holdings Inc. v. Handylab, Inc. (Fed. Cir. 2021)

McDonnell Boehnen Hulbert & Berghoff LLP on 11/12/2021

The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be...more

The PTAB Trial Tracker

Goodwin on 9/30/2020

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/30/2019

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Jones Day on 7/24/2019

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

PTAB Deputy Chief Judge Bonilla Provides Claim Amendment Pilot Insights

Jones Day on 11/29/2018

On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for...more

Recent Update on Patent Trial Practice Guide

Knobbe Martens on 9/4/2018

The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

Revamped PTAB Trial Practice Guide Holds Surprises

Foley & Lardner LLP on 8/14/2018

The Patent Trial and Appeal Board (“PTAB”) issued its initial Trial Practice Guide in August 2012, shortly before America Invents Act (“AIA”) post-grant proceedings became available. That Guide had not been supplemented or...more

4 Things You Must Know about AIA Trial Depositions

Esquire Deposition Solutions, LLC on 7/11/2018

After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952,...more

Intellectual Property Bulletin - Summer 2018

Fenwick & West LLP on 7/11/2018

In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

The Supreme Court - June 25, 2018

Dorsey & Whitney LLP on 6/26/2018

The Supreme Court of the United States issued two decisions today: Ohio v. American Express Co., No 16-1454: American Express (Amex), like all credit-card companies, operates a transaction network that serves two groups:...more

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/19/2018

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

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

Bryan Cave Leighton Paisner on 4/25/2016

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

New Rules for Patent Office Litigation: Will They Make Patent Owners Happy?

McCarter & English, LLP on 4/7/2016

On April 1, the U.S. Patent and Trademark Office (USPTO) published new rules for the increasingly popular America Invents Act (AIA) proceedings, such as inter partes reviews, covered business method reviews, and post-grant...more

The New AIA Rules May Help Patent Owners Avoid Trial

Foley & Lardner LLP on 4/6/2016

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more

PTO Issues New Final Rules for PTAB Proceedings

Latham & Watkins LLP on 4/6/2016

New rules give more options to patent owners and petitioners in pre-institution phase. On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more

New Rules For Patent Validity Challenges: What You Need To Know

Lathrop GPM on 4/6/2016

On March 31, 2016, the United States Patent & Trademark Office (USPTO) issued new final rules to make targeted modifications to the existing consolidated set of rules implementing provisions of the Leahy-Smith America Invents...more

USPTO to Implement Significant Rule Changes for AIA Trial Proceedings Impacting Both Petitioners and Patent Owners

Womble Bond Dickinson on 4/6/2016

The United States Patent and Trademark Office (USPTO) has released the final set of the latest round of changes to the rules governing inter partes review, post grant review, and other AIA trial proceedings before the Patent...more

U.S. Patent and Trademark Office Announces Rule Amendments for Trials Before the Patent Trial and Appeal Board

Morrison & Foerster LLP on 4/4/2016

In an April 1, 2016 Federal Register Notice (“Notice”),1 the United States Patent and Trademark Office (“Office”) finalized amendments to rules governing trial practice for inter partes review, post-grant review, transitional...more

New PTAB Trial Rules Proposed

McDermott Will & Emery on 9/3/2015

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

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America Invents Act › Expert Testimony

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