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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IP Buzz - Post Grant Practice - August 2014

In this issue: - IPR Spotlight Series: Strategically Using Requests for Joinder in IPR - Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review - Reaching a Milestone: Filing...more

IPR Spotlight Series: Strategically Using Requests for Joinder in IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and...more

Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review

While the Leahy-Smith America Invents Act (AIA) provides a mechanism that allows amendments to patents challenged in an inter partes review, until recently, all motions to amend have failed. The final decision in...more

Consider this Potential Downside of Inter Partes Review: Denial of the Petition May Be Used Against You in a Concurrent District...

In many instances, it may be advantageous to challenge patent validity via an AIA trial in front of the Patent Trial and Appeal Board (PTAB). Despite all of the advantages to an AIA trial, a potential AIA trial petitioner...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

Insights from a Recent Panel on Navigating AIA Trials

On July 14, 2014, the Bar Association of the District of Columbia presented "Navigating AIA Trials at the USPTO," a panel discussion on the Leahy-Smith America Invents Act (AIA) trials, which took place at the D.C. office of...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

IP Buzz - Post Grant Practice

In this issue: - IPR Spotlight Series: Preparing and Filing a Petition - AIA Trials By Fire: How to Protect Your Patent Portfolio Against PTAB "Death Squads" - Should I Stay or Should I Go [to the PTAB]...more

AIA Trials By Fire: How to Protect Your Patent Portfolio against PTAB "Death Squads"

Under the America Invents Act (AIA), patent challengers now have three new kinds of post-grant review with which to attack a patent's validity: inter partes review (IPR), post-grant review (PGR), and covered business method...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

IP Buzz - April 2014

In this issue: - 10 Reasons Every Defendant in Patent Litigation Should Consider Inter Partes Review - Reasons to Think Twice Before Initiating Inter Partes Review - First AIA Roundtable Hints at More...more

Patent Trial and Appeal Board Statistics

Inter partes review (“IPR”) and covered business method review (“CBM”) became options for challenging issued patents under the America Invents Act on September 16, 2012. These proceedings are turning out to be even more...more

Federal Circuit to Review PTAB Post-Grant Review Proceedings in SAP v. Versata: PTAB Jurisdiction; Grounds on Which Invalidity May...

On September 16, 2012, post-grant proceedings became available as means to challenge patent validity pursuant to the America Invents Act. The post-grant proceedings take place before the Patent Trial and Appeal Board...more

First AIA Roundtable Hints at More Conservative Approach to PTAB Review

On April 15, 2014, the Patent Trial and Appeal Board (“PTAB”) hosted the first in a series of eight scheduled roundtable discussions intended to share information about the new America Invents Act (“AIA”) trials, including...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

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