America Invents Act Inter Partes Review Proceedings

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

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

The Importance of the One-Year AIA Timeline

Rackspace US, Inc. v. Personal Web Techs., LLC - Addressing the one-year time frame for completing inter partes review (IPR) in the context of a stay request, the U.S. Patent and Trademark Office’s (PTO) Patent Trial...more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

Estoppel effects of post-grant patent proceedings under the AIA

By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous...more

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

It is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR. In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue...more

Docs @ BIO -- Federal District Court vs. the PTAB

Yesterday, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before...more

What Australian companies need to know about ‘patent oppositions’ in the US

Many Australian companies will be familiar with the pre-grant patent oppositions that are available under Australian law. Similarly, many Australian companies will be familiar with post-grant patent oppositions before the...more

First Patents Survive Inter Partes Review Fully Intact

ABB Inc. v. ROY-G-BIV Corp. - In the past several months, decisions have been rendered in the first wave of inter partes reviews filed under the American Invents Act (AIA). The early IPR decisions of the Patent Trial...more

Federal Circuit Finds Consumer Watchdog Lacks Standing to Appeal Reexamination Decision Upholding WARF Stem Cell Patent

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Federal Circuit held that an inter partes reexamination requester must establish an injury in fact sufficient to confer Article III standing in order to appeal...more

IP Newsflash - May 2014

FEDERAL CIRCUIT CASES - Newsgroup Post Held to be A Printed Publication and Anticipatory Prior Art - On May 27, 2014, the Federal Circuit affirmed a decision granting summary judgment of invalidity by the...more

PTAB Grants First Motion for Leave to Amend in Inter Partes Review

Representatives from the U.S. Patent and Trademark Office, led by Janet Gongola, Senior Advisor to the Deputy Director of the U.S. Patent and Trademark Office, spent the better part of last month traversing the U.S....more

Interpartes Review: Is it Right for You? [Video]

The America Invents Act (AIA) created a number of changes in how we obtain and enforce patents. But perhaps more substantially it changed the way that individuals can challenge the validity of patents. The AIA created a...more

Three Reasons PTAB Litigation Costs More Than We Thought

The America Invents Act (AIA) has been in effect from more than a year and half. Now, many have begun to ask if the patent office trials the AIA created are living up to their promise of lowering patent litigation costs and...more

Five Considerations When Choosing How to Challenge Patent Validity

Inter partes review (IPR) is quickly becoming a popular choice for challenging the validity of a patent. The America Invents Act (AIA) established IPR as a mechanism for challenging patent validity through an evidentiary...more

Cumulative Art Rejections v. Estoppel: Balancing Competing Interests In IPR Petitions

Inter Partes Review, or IPR, is one of the new procedures implemented through the Leahy-Smith America Invents Act that challenges a patent’s validity at the Patent Trial and Appeals Board (PTAB) of the United States Patent...more

Pre-AIA Litigation Triggers Time Bar for Inter Partes Review - Apple Inc. v. VirnetX, Inc. and Science Applications International...

In response to a petitioner’s request for rehearing of a decision denying institution of an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) reiterated that...more

Idle Free v. Bergstrom - Turning the Tables on Patent-Holders

The “America Invents Act” (“AIA”), signed into law on September 16, 2011, dramatically reformed existing patent laws. One particularly important provision replaced Inter Partes Reexamination, a form of post-grant review, with...more

Intellectual Property Bulletin - Winter 2014

The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more

New IPR Ruling Further Clarifies Burden on Patentees to Amend Claims

The Patent Trial and Appeal Board (PTAB) issued its second Final Written Decision in a contested case under the AIA's inter partes review process on January 7, 2014. As with the PTAB's first decision, the petitioner...more

A Road Test of the New PTAB and a Road Map for Future IPR’s - Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC

In the final decision of the first inter partes review (IPR) (under the America Invents Act), in a proceeding that included a rejection of the patent owner’s attempt to antedate prior art using, as evidence, an inventor’s...more

TC's inside IP - Winter 2013: The AIA: Reviewing the First Year of Inter Partes Review

September 16, 2013, marked the one-year anniversary of the implementation of the America Invents Act, and with it, the introduction of an important tool for challenging the validity of an issued patent at the U.S. Patent and...more

6 Reasons Inter Partes Review Was Popular in 2013

A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact. While many predicted that Inter Partes Review (IPR)...more

WARF Could Avoid Federal Circuit Review

On November 25, 2013, Consumer Watchdog (“CW”) and Wisconsin Alumni Research Foundation (“WARF”) responded to the Federal Circuit’s Order directing each party to brief whether CW, as a third party requester, has standing to...more

Inter Partes Review: The Judiciary’s Appreciation For A Predictable Timeline

The implementation of the Leahy-Smith America Invents Act (“AIA”) has changed the patent law landscape in the United States. One of the important changes brought about by the AIA was the introduction of Inter Partes Review...more

U.S. PTAB Issues First Final Decision in an Inter Partes Review

On November 13, 2013, the U.S. Patent Trial and Appeal Board (PTAB) issued its first final decision in an inter partes review (IPR) proceeding brought by Garmin under the new administrative procedures established by the...more

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