Patent Reform Post-Grant Review

News & Analysis as of

House Committee Advances Competing Patent Reform Legislation

With yesterday’s House Judiciary Committee vote, there are now competing, and in some respects significantly different, patent reform proposals under serious consideration in the House and the Senate. Among the most important...more

Possibility of More Reform Spurs Increase in Patent Case Filings

Lex Machina’s Spring 2015 Patent Case Filing Trends: "Patent case filings have been generally higher in the first five months of 2015 than in the last 8 months of 2014. May of 2015 had the most patent cases filed on any...more

Patent Pending: The Outlook for Patent Legislation in the 114th Congress

The field of patent law is in a state of flux. Just four years after the America Invents Act (“AIA”) went into effect, Congress is taking up the issue once again, this time seeking to pass legislation to curb abusive patent...more

Congress Continues to Promote Patent Reform Efforts

In recent years, Congress has devoted a great deal of attention to patent reform. Those efforts led in 2011 to passage of the Leahy-Smith America Invents Act (AIA), which was the most extensive revision of the patent laws in...more

STRONG Patents Act of 2015 -- An Alternative Patent Reform Bill

Yesterday, Sen. Christopher Coons (D-DE), Sen. Richard Durbin (D-IL), and Sen. Mazie Hirono (D-HI) introduced the "Support Technology and Research for Our Nation's Growth (STRONG) Patents Act of 2015." What is unique about...more

Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR

With the new Congress firmly seated and various legislative efforts gaining momentum, another effort to reform patent system is taking its share of the spotlight. In early February, the House of Representatives took the first...more

An Inexpensive Alternative to Patent Litigation

The America Invents Act (AIA), passed in September 2011, provides additional procedures to challenge the validity of patents in the U.S. Patent and Trademark Office (USPTO). These “post grant” procedures are far less...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

12 Observations on Covered Business Method Review

CBM: When the America Invents Act (AIA) was passed in 2011, it ushered in a number of new post-grant options to challenge and defend patents at the United States Patent and Trademark Oce. One of these newly-created...more

Pending Patent Legislation—Round Two of Patent Reform

The U.S. Congress is once again poised to enact a new round of patents reforms. It is important to know the potential impact the legislation could have on your intellectual property portfolio and to be prepared to act....more

The Five Ps of Patent Reform: What You Need to Know About the Patent Litigation Reform Legislation Moving Through Congress

The Leahy–Smith America Invents Act (AIA) was passed by Congress and enacted into law on September 16, 2011. Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX), the Act changed the U.S. patent...more

Demonstratives in Post-Grant Proceedings  [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- demonstratives in post-grant...more

Video: Claim Contruction in Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- claim construction in post-grant...more

Claim Amendments in Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- claim amendments in post-grant...more

Dominion Dealer Solutions Seeks Review of USPTO Decisions Denying Inter Partes Review

On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review...more

Court Stay Factors in Concurrent Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- court stay factors in post-grant...more

Patent Eligibility Challenges in Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- patent eligibility challenges in...more

Witnesses in Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- witnesses in post-grant...more

Precedential Impact of Patent Trial & Appeal Board Decisions in Post-Grant Proceedings [Video]

In this video, Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- the precedential...more

The impact of inter partes review on patent litigation

The America Invents Act (AIA) created a new post-grant review proceeding in the USPTO, the inter partes review or IPR. On September 16, 2012, the USPTO stopped accepting petitions for inter partes reexamination and the IPR...more

District Court Refuses to Review USPTO Decision to Institute Post Grant Review of Versata Covered Business Method Patent

In Versata Development Corp. v. Rea, the U.S. District Court for the Eastern District of Virginia dismissed Versata’s challenge of the PTAB’s decision to institute post grant review of its patent for lack of jurisdiction....more

Patent Office Litigation Update: Design Patents [Video]

Interest in design patents is increasing, in part, because they can be obtained relatively inexpensively and quickly. As a result, design patent owners who enforce their patents are likely to see an increase in post-grant...more

Three New Tools to Challenge Patents

Among the most significant changes made by the America Invents Act (AIA) are the provisions that permit a business to challenge a patent at the U.S. Patent and Trademark Office in litigation-type proceedings, but at a lower...more

Focus on Private Equity - Issue 2, June 2013

In This Issue: - Avoiding Repricing Pitfalls - America Invents Act: Practical Considerations for Portfolio Companies. - Excerpt from Avoiding Repricing Pitfalls: Perhaps it is no more than a result of...more

Intellectual Property Alert: First Decision In New AIA Process Invalidates Software Business Method Patent As Unpatentable Subject...

On June 11, 2013, the first decision in the new post grant review (PGR) process created by the 2011 America Invents Act (AIA) was issued. ...more

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