America Invents Act Patent Trial and Appeal Board

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

Reaching a Milestone: Filing of the First Ever Petition for a Post-Grant Review

On August 5, 2014, a milestone was reached for AIA trials. For the first time, a petition for a Post Grant Review (PGR) was filed. As was the case with the first covered business method review, the first PGR will likely be...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

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Beware the Death Squad

On August 14, 2014, Law360 quoted PTAB Chief Judge James Smith commenting that the Board’s reputation as a patent “death squad” – a phrase coined by former Federal Circuit Chief Judge Randall Rader. ...more

PTAB Issues First Precedential Opinion in an AIA Post-Grant Proceeding

During an AIA Post-Grant Proceeding, the Patent Trial & Appeal Board (“PTAB”) can issue three types of decisions: (1) routine, (2) informative, and (3) precedential. Routine decisions are the most common and have limited...more

Board Issues First Precedential Opinion

An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding. ...more

Motion to Stay Pending CBM Review Granted Where Non-Practicing Entity Did Not Seek Preliminary Injunction

Boku, Inc. ("Boku") filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff's U.S. Patent No. 7,273,168 (the "'168 patent"). The petition challenged all claims of the '168 patent on grounds that...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

Public Comments on AIA Trial Proceedings – the USPTO is Listening

As mentioned in a previous article, the Patent Trial and Appeal Board (PTAB) held a series of roundtables throughout the United States this spring to solicit public feedback on AIA trials. Having received some feedback during...more

Federal Circuit Orders Stay Pending Completion of CBM Review

Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more

Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings

In a post from yesterday entitled "Help Improve our AIA Trial Proceedings," Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office, announced on...more

Federal Circuit Favors Stay of Litigation Pending CBMR

In Virtualagility Inc. v. Salesforce.com, Inc., [2014-1232] (July 20. 2014), the Federal Circuit reversed the district court’s denial of a stay of an infringement suit pursuant to AIA § 18(b)(1) pending disposition of a...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

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

USPTO Issues Final Rule to Implement PTA Provisions of AIA Technical Corrections Act and Provide Optional Procedure for Requesting...

On May 15, the U.S. Patent and Trademark Office published a Federal Register notice (79 Fed. Reg. 27755) to adopt as final changes to the rules of practice implementing the patent term adjustment (PTA) provisions of section...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

Liberty Mutual Achieves Total Knockout of Progressive Patents in Series of Post-Grant CBM Proceedings

A recent dispute involving major automobile insurance companies resulted in the invalidation of five patents through the initiation of post-grant Covered Business Method Patent Review proceedings. The dispute demonstrates...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

AIA Statistics: A Closer Look at the Outcome of AIA Trials Based on the Year of Patent Issue

Since September 16, 2012, inter partes review (IPR) and covered business method (CBM) review have been available as proceedings to challenge the validity of patents before the PTO. This article looks at how the Patent Trial...more

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