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 -
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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

Demonstratives in Post-Grant Proceedings  [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- demonstratives in post-grant...more

No Assignor Estoppel in AIA Inter Partes Review

The popularity of IPR proceedings will likely increase as assignor estoppel does not apply to IPRs. Inter Partes Review (IPR) proceedings have become a very popular method of challenging patent validity for actual and...more

Dominion Dealer Solutions Seeks Review of USPTO Decisions Denying Inter Partes Review

On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review...more

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 11, Issue 4 (Fall 2013): Inter Partes Review and Inter...

On September 16, 2012, Inter Partes Review (IPR) replaced Inter Partes Reexamination (IPX) as an avenue for third party patentability challenges in the United States Patent and Trademark Office (PTO). Arising from the 2011...more

Four Tips on Preparing Inter Partes Review Petitions [Video]

Jon Wright, a director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, gives would-be petitioners four tips for preparing for inter partes review under the America Invents Act. Wright tells petitioners...more

One Year Later: Observations From The First Year Of Contested Proceedings At The USPTO

The America Invents Act - September 16, 2013 marks the one-year anniversary of the implementation of the America Invents Act, and with it, Covered Business Method (CBM) and Inter Partes Review (IPR) proceedings. To...more

The impact of inter partes review on patent litigation

The America Invents Act (AIA) created a new post-grant review proceeding in the USPTO, the inter partes review or IPR. On September 16, 2012, the USPTO stopped accepting petitions for inter partes reexamination and the IPR...more

The America Invents Act (AIA) Affects Design Patents, Too

Over the last few years, companies have increasingly recognized the value of design patents, which are directed to the ornamental (non-functional) appearance of a product....more

Three New Tools to Challenge Patents

Among the most significant changes made by the America Invents Act (AIA) are the provisions that permit a business to challenge a patent at the U.S. Patent and Trademark Office in litigation-type proceedings, but at a lower...more

America Invents Act (AIA) Chart For University Personnel

The following chart reflects a stratified list of recommendations that university personnel should consider in view of the new U.S. patent system, i.e., the America Invents Act (AIA), which is intended to align the current...more

Six-Month Report Card: Post-Issuance Proceedings Under the AIA

Introduction - On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties...more

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013,...more

Patent Office Litigation Update: Impact on Timing [Video]

Donald R. Banowit, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., explains two recent clarifications to the deadlines for filing a petition for inter partes review at the USPTO....more

The Perfect Patent Office Litigator [Video]

In this video, Robert Greene Sterne, a founding director of intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., describes the perfect patent office litigator to handle the new contested proceedings under...more

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