America Invents Act Inter Partes Review (IPR) Proceeding

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

Federal Circuit Rules That Not All Petitioners Have Standing to Appeal Adverse IPR ResultsFederal Circuit Rules That Not All...

The Federal Circuit recently dismissed an appeal from an inter partes review proceeding where the appellant/petitioner failed to establish that it had constitutional standing to maintain an appeal. Phigenix, Inc. v....more

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an...more

Federal Circuit Finds IPR Petitioner Lacks Standing To Appeal

On January 9, 2017, in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR. While acknowledging that the AIA permits a...more

Federal Circuit Requires Standing To Appeal An IPR Decision

In the case of Phygenix, Inc. v. ImmunoGen, Inc., the Court of Appeals for the Federal Circuit (CAFC) held that the petitioner (Phygenix) that had unsuccessfully challenged certain claims of ImmunoGen’s U.S. Patent No....more

Strategic Insights for IPRs [Video]

Since 2012, IPR's have emerged as one of the most significant developments in intellectual property. Even if you are already familiar with IPR's, this videos illustrates how actual IPR practitioners might approach some common...more

IP Cases to Watch in 2017

The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

Top Five Stories of 2016

After reflecting upon the events of the past twelve months, Patent Docs presents its tenth annual list of top patent stories. For 2016, we identified twenty stories that were covered on Patent Docs last year that we believe...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

AIA Diligence Standard Does Not Require Daily Work on Invention

Addressing the requirements for proving an inventor’s diligence in reducing an invention to practice, the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB or Board) applied an...more

Denial of En Banc Review Preserves PTAB Practice of Partial IPR **WEB ONLY**

Addressing whether it is proper for the Patent Trial and Appeal Board (PTAB or Board) to institute inter partes review (IPR) for only some (not all) claims challenged in an IPR petition, the US Court of Appeals for the...more

Patent Owners’ Options After Claims Are Cancelled in AIA Post-Grant Proceedings

The America Invents Act (AIA) instituted sweeping changes in U.S. patent law, including creating new proceedings for third parties to challenge an issued patent before the Patent Trial and Appeal Board (PTAB). These new...more

USPTO Proposes Fee Increases for FY 2017

The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its...more

Aqua Products En Banc Hearing Reveals Further Administrative Law Issues

On December 9, 2016, the Federal Circuit held an en banc hearing in In re Aqua Products. As noted earlier, one of the questions posed for en banc review had a distinctly administrative law tone. That question asked whether...more

Terminating a Post-Grant Proceeding By Settlement Before the Patent Trial and Appeal Board Has “Decided the Merits”

Voluntarily terminating a post-grant proceeding before the Patent Trial and Appeal Board (PTAB) prior to a final written decision may be appropriate in situations where the parties have agreed to settle the proceeding....more

PTAB Reversed on Issue of Diligent Reduction to Practice

Perfect Surgical Techniques (PST), Inc. owns US 6,030,384 (‘384). Olympus petitioned for Inter Partes review of ‘384 as anticipated or obvious over JP H10-33551 (JP ‘551). JP ‘551 published less than one year before the...more

Lessons Learned from AIA Invalidity Proceedings in the Bio/Pharma Space

September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board (PTAB or Board) created by the America Invents Act (AIA). These new AIA...more

Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Fed. Cir. 2016)

Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention...more

Swearing Behind A Reference With Reasonably Continuous Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

Freedom to Operate and the Use of AIA Review

Freedom to Operate: •Identifying infringement risk •Third party patent (infringement) – claim searching –Timing •Discrete, continuous –Searching •In-house, search agency –Screening/analyzing •Ranking...more

PTAB Estoppel: Recent Guidance on What Grounds of Challenge “Reasonably Could Have Been Raised” in an Earlier Proceeding

The scope of estoppel under the America Invents Act is becoming clearer in view of recent Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions. As discussed in our earlier article, the Federal Circuit has...more

Biotechnology Innovation Organization's Amicus Brief for In re Aqua Products, Inc.

On Friday, December 9, 2016, the Federal Circuit will hear oral arguments en banc in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR proceedings. ...more

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”). An...more

Due Process in AIA Trials

In Cuozzo, the Supreme Court emphasized that it “do[es] not categorically preclude review of a final decision where a petition fails to give ‘sufficient notice’ such that there is a due process problem with the entire...more

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