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 -
News & Analysis as of

A New Business Model: The IPR Troll

In my last post, I discussed new proceedings under the America Invents Act (AIA) of 2012 which a company can use to challenge third party patents. One of the more popular of these procedures is the Inter Partes Review (IPR)....more

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

Federal Circuit Grants En Banc Review Of Amendment In AIA Trials

Successful motions to amend in AIA trials continue to be rare. The Patent Trial and Appeal Board conducted and published a Motion to Amend Study this year: as of April 30, 2016, the Board had completed 1539 trials; 192 of...more

Federal Circuit Rebukes PTAB for Shifting Burden of Proof to Patentee in IPR

Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more

Korea Quarterly - August 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to...more

In re Aqua Products, Inc. -- CAFC Grants Rehearing En Banc to Consider PTAB Motions to Amend

On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more

Federal Circuit Rules that PTAB Claim Construction in Inter Partes Interference Proceeding Is Not Binding on District Court in...

Skyhawke Technologies, LLC v. Deca International Corp., Case No. 2016-1325 (Fed. Cir. July 15, 2016) - One recurring question arising from AIA trials and other post-grant proceedings before the PTAB is whether a claim...more

PTAB Issues Only Its Third Post-Grant Review Decision to Date, Invalidates Storage Container Tracking Claims Directed to...

On August 2, 2016, the Patent Trial and Appeal Board (PTAB), in proceeding PGR2015-00009, invalidated a patent for storage container tracking and delivery as being directed to patent-ineligible subject matter under 35 U.S.C....more

In First Set of Post-Grant Review Decisions, PTAB Strikes Down Patents Based on Alice

Addressing for the first time the issue of patent validity in the context of an America Invents Act post-grant review, the Patent Trial and Appeal Board (PTAB or Board) invalidated two livestock patents as unpatentable under...more

No Rehearing on Dual Use PTAB Panels

Confirming that the same panel of judges at the Patent Trial and Appeal Board (PTAB or Board) has the authority to institute America Invents Act (AIA) reviews and make a final determination on the merits, the US Court of...more

Opportunity for Response when Claim Construction Changes

Addressing claim construction and procedural issues during an inter partes review (IPR), the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB or Board) patentability determination for...more

A Different Route: Challenging Orange Book Patents Via Inter Partes Review

Since the passage of the America Invents Act (AIA) in 2012, and the corresponding implementation of the inter partes review (IPR) process, patent challengers have been utilizing the Patent Trial and Appeal Board (PTAB) as an...more

Patent Due Diligence and Evaluation After the AIA

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims...more

Hot Topics: AIA Estoppel Provisions Clarified

The Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., has shed some light on the estoppel provisions in America Invents Act (AIA) post-grant proceedings. Like the estoppels in...more

Intellectual Property Law - July 2016

Supreme Court: Status Quo in Cuozzo - Why it matters: On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee, where it rejected challenges to the Patent Trial and Appeal Board (PTAB) inter partes...more

Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more

Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in...

In Cuozzo Speed Techs., LLC v. Lee,[i] the U.S. Supreme Court rejected the patent owner’s challenge to the U.S. Patent and Trademark Office’s implementation of the Leahy-Smith America Invents Act’s new post grant proceedings....more

The Start of Something Big? PTAB Issues First PGR Final Decisions

Post Grant Review (“PGR”) is a Patent Trial and Appeal Board (“PTAB”) proceeding established under 35 U.S.C. § 321 that permits the PTAB to review the patentability of claims in a patent based on any grounds under 35 U.S.C. §...more

Supreme Court Decides Two Key Aspects of IPR in Cuozzo Speed Techs., LLC v. Lee

The U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is...more

Inter Partes Review Institution Decisions Not Appealable, Broadest Reasonable Interpretation Remains Standard

In Depth - The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more

Federal Circuit Patent Updates - June 2016

Cuozzo Speed Technologies, LLC v. Lee (No. 2015-446, 6/20/16) (Roberts, Kennedy, Thomas, Ginsburg, Breyer, Alito, Sotomayor, Kagan) - June 20, 2016 12:49 PM - Breyer, J. Affirming Federal Circuit decision that the...more

Litigation Alert: Supreme Court Leaves Intact PTAB Authority to Institute and Regulate Inter Partes Review Proceedings

This week in Cuozzo Speed Technologies, LLC v. Lee, the United States Supreme Court decided two important questions related to the power of the Patent Trial and Appeal Board (PTAB) over inter partes review proceedings. First,...more

Federal Circuit Rules That PTAB May Base AIA Trial Decision on Facts Outside Petition for Review

The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) invalidating two patents after an inter partes review proceeding, even though the decision...more

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