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

PTAB Update -- A Review of the First Round of Comments (Part 1)

The USPTO has been seeking feedback on the PTAB trial proceedings established by the Leahy-Smith America Invents Act. A Federal Register Notice from June 27, 2014 contained the "Request for Comments on Trial Proceedings...more

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

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

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

Post-Grant Report - May 2014: The Scope Of Discovery In Inter Partes Review Proceedings

A significant difference in the new inter partes review (IPR) proceedings versus the previous inter partes and ex parte reexamination proceedings is the availability of discovery to both petitioners and patent owners in IPR...more

A Primer On Claim Amendments in Post-Grant Review

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd. - In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under...more

IP Newsflash - May 2014

Improper Submission of New Evidence Undermines Patent Challenge - In its final written decision, a PTAB panel granted a patent owner’s (owner) motion to exclude evidence submitted by a petitioner in support of its...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

Versata v. SAP: Stay of $390 Million Judgment Denied Even Though PTAB Found Patent Invalid

After the jury returned a verdict of approximately $390 million against SAP and the verdict was affirmed on appeal, the Patent Trial and Appeal Board ("PTAB") preliminarily invalidated the patent (subject to appeal to the...more

Ruling in Eastern District of Texas Sets the Stage for the Federal Circuit to Revisit Fresenius v. Baxter

Versata Software, Inc. et al. v. SAP America, Inc. et al., Case No. 2:07cv153-RSP (E.D. Tex.) - Versata v. SAP has been a dispute that the patent bar has followed with interest because it spawned the very first Covered...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

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