Inter Partes Review Proceedings

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

by Donna M. Haynes, Carey Jordan, Iona Kaiser | McDermott Will & Emery on 4/8/2013

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

Intellectual Property Newsletter - March 2013

by King & Spalding on 4/5/2013

*News from the Bench: - First Sale Doctrine Applies To Copyrighted Works Lawfully Made Abroad. - Dissenting Federal Circuit Judges Abide By The Akamai Standard. - More On Joint Infringement and The Akamai...more

Patent Office Litigation Update: Impact on Timing [Video]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/2/2013

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]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/29/2013

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

Patent Office Litigation Update: Lessons Learned from Contested Proceedings at the USPTO [Video]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/27/2013

In this video, Eldora L. Ellison, Ph.D., director with the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., discusses lessons learned from pending inter partes review and covered business method...more

Patent Office Litigation Update: Stays at the U.S. District Court [Video]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/21/2013

In this video, Donald R. Banowit, director with the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., discusses the interface between district court patent litigation and contested patentability...more

The Decision Maker's Guide to Contested Proceedings Under the American Invents Act [Video]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/19/2013

Under the America Invents Act, a patent owner has many tools available when considering contested proceedings. Some of those options include inter partes review, covered business method review proceedings, supplemental...more

Intellectual Property Litigation Alert: Post-Grant Review And Inter-Partes Review Are New Alternatives To Federal Litigation

by David Axtell, Katherine Moerke | Leonard, Street and Deinard on 3/15/2013

In September 2011, the America Invents Act (AIA) reformed the United States patent statutes. One of the most significant reforms is the change from a "first-to-invent" system to a "first-inventor-to-file" system for new...more

Patent Office Litigation Update: Recommendations Following First Five IPR Trials Instituted [Video]

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/13/2013

Decisions from the first inter partes review proceedings are beginning to flow from the Patent Trial & Appeal Board. Jon E. Wright, director at intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. has...more

USPTO Inter Partes Review Update: Scope of Discovery

by Don Daybell, Mark Wine | Orrick, Herrington & Sutcliffe LLP on 3/8/2013

In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC, Case No. IPR2012-00001 (PTAB March 5, 2013), the USPTO recently issued its first-ever substantive ruling on a motion for additional discovery in an Inter Partes review...more

America Invents Act: Inter Partes Review

by Deborah Sterling, Ph. D., Eldora Ellison, Ph. D. | Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/11/2013

What is an inter partes review? An inter partes review (“IPR”) enables a third party to challenge one or more claims in an issued patent at the United States Patent & Trademark Office (“Office”). IPR was designed to...more

A Look at the Technical Amendments to the America Invents Act (AIA) Made by HR 6621

by Courtenay C. Brinckerhoff | Foley & Lardner LLP on 2/7/2013

On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S....more

USPTO Board Holds That Complaint Dismissed Without Prejudice Does Not Bar Inter Partes Review

by Courtenay C. Brinckerhoff | Foley & Lardner LLP on 2/5/2013

In a decision granting (in part) a Request for Inter Partes Review, the USPTO Patent Trial and Appeal Board (PTAB) held that an infringement complaint that was dismissed without prejudice did not bar the Request for Inter...more

New Patent Fees Finalized

by Scott Chambers, B. Dell Chism, Richard Oparil | Patton Boggs LLP on 1/29/2013

The U.S. Patent and Trademark Office (PTO) has finalized new fees to take effect in March 2013. The PTO believes these fees will aid in reducing pendency of patent applications within the agency. The PTO is relying on...more

AIA Technical Corrections Bill Signed Into Law

by MIchele Cimbala, Jeremiah Frueauf | Sterne, Kessler, Goldstein & Fox P.L.L.C. on 1/16/2013

President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of...more

America Invents Act Updates Take Final Form

by Anders Aannestad, Kate McElhone, Cary Miller | Morrison & Foerster LLP on 1/5/2013

In a last-minute decision for the 112th Congress, the House of Representatives approved an America Invents Act (AIA) technical-revisions bill as amended by the Senate (H.R. 6621) on January 1, 2013. President Obama is...more

AIA Correction Bill

by Pillsbury Winthrop Shaw Pittman LLP on 1/5/2013

On December 28, 2012, the Senate passed an amendment correcting certain portions of the AIA, and the House approved the amendment via voice vote on Tuesday, January 1, 2013. The amendment will permit inter partes review of...more

Stripped of Controversial Provisions, Lame-Duck Patent Reform Heads to Obama's Desk

by Jonathon K. Hance, Constance Gall Rhebergen, Michael R. Samardzija, Ph.D., Jeffrey S. Whittle | Bracewell & Giuliani LLP on 1/4/2013

On January 1, 2013 — immediately after passing the fiscal crisis bill — the House of Representatives agreed by voice vote (at 11:13 PM) to approve the Senate's Amendments to H.R. 6621. A controversial provision that would...more

Federal Circuit Holds the Reexamination Door Open in In Re Baxter

by Courtenay C. Brinckerhoff | Foley & Lardner LLP on 11/30/2012

When the Federal Circuit denied the Request for Panel Rehearing and Rehearing en banc in In re Baxter, the court let stand its two decisions that affirmed conflicting rulings on the validity of the same patent....more

Advantages Of Inter Partes Review In Hatch-Waxman Cases

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/30/2012

Originally published in Law360, New York on November 15, 2012. Signed into law by President Obama on Sept. 16, 2011, the America Invents Act represents the most sweeping changes to U.S. patent law in over 60 years....more

Kirton McConkie: America Invents Act (AIA) (Presentation)

by Kirton McConkie PC on 10/9/2012

Summary: America Invents Act (AIA): - Changes to 35 USC 102 and 103 .. “First to File” System .. Derivation Proceedings - Review & Opposition of Patents. .. Post-Grant Review .. Inter Partes...more

Be Prepared: America Invents Act Will Be Changing in the U.S. from ‘First-to-Invent’ to ‘First-to-File’ System

by Pepper Hamilton LLP on 9/17/2012

September 16, 2012 marked the second wave of implementations of the America Invents Act. The first wave of implementations took place a year ago, September 16, 2011, and included changes to false marking, fees,...more

USPTO Issues Final Rules for America Invents Act Provisions That Take Effect September 16, 2012

by Foley & Lardner LLP on 8/13/2012

As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication...more

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Inter Partes Review Proceedings

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

Intellectual Property Newsletter - March 2013

Patent Office Litigation Update: Impact on Timing [Video]

The Perfect Patent Office Litigator [Video]

Patent Office Litigation Update: Lessons Learned from Contested Proceedings at the USPTO [Video]

Patent Office Litigation Update: Stays at the U.S. District Court [Video]

The Decision Maker's Guide to Contested Proceedings Under the American Invents Act [Video]

Intellectual Property Litigation Alert: Post-Grant Review And Inter-Partes Review Are New Alternatives To Federal Litigation

Patent Office Litigation Update: Recommendations Following First Five IPR Trials Instituted [Video]

USPTO Inter Partes Review Update: Scope of Discovery

America Invents Act: Inter Partes Review

A Look at the Technical Amendments to the America Invents Act (AIA) Made by HR 6621

USPTO Board Holds That Complaint Dismissed Without Prejudice Does Not Bar Inter Partes Review

New Patent Fees Finalized

AIA Technical Corrections Bill Signed Into Law

America Invents Act Updates Take Final Form

AIA Correction Bill

Stripped of Controversial Provisions, Lame-Duck Patent Reform Heads to Obama's Desk

Federal Circuit Holds the Reexamination Door Open in In Re Baxter

Advantages Of Inter Partes Review In Hatch-Waxman Cases

Kirton McConkie: America Invents Act (AIA) (Presentation)

Be Prepared: America Invents Act Will Be Changing in the U.S. from ‘First-to-Invent’ to ‘First-to-File’ System

USPTO Issues Final Rules for America Invents Act Provisions That Take Effect September 16, 2012

Patent Office Litigation Update: Impact on Timing [Video]

The Perfect Patent Office Litigator [Video]

Patent Office Litigation Update: Lessons Learned from Contested Proceedings at the USPTO [Video]

Patent Office Litigation Update: Stays at the U.S. District Court [Video]

The Decision Maker's Guide to Contested Proceedings Under the American Invents Act [Video]

Patent Office Litigation Update: Recommendations Following First Five IPR Trials Instituted [Video]

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