News & Analysis as of

Patents Prior Art Post-Grant Review

Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to...

by Foley & Lardner LLP on

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims...more

PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

by Pepper Hamilton LLP on

In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied,...more

Why Design Patents Are Surviving Post-Grant Challenges

As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

by Morgan Lewis on

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners. Please see full Digest Report below for more information....more

Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...more

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Evidence to Negate PGR Eligibility Based on Filing Date May Not Be Sufficient to Establish Filing Date for Purposes of Antedating...

by McDermott Will & Emery on

Addressing for the first time the sufficiency of evidence needed to establish an earlier priority date for purposes of post-grant review (PGR) eligibility versus the evidence required to antedate a prior art reference, the...more

Federal Circuit Review | October 2016

by Knobbe Martens on

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Netsirv v. Boxbee, Inc. (PTAB 2016)

A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more

PTAB Provides Procedural Guidance, Designates Five Opinions as Precedential

by McDermott Will & Emery on

On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business...more

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

by WilmerHale on

After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more

Petitioner Wins Uncontested Alice Fight - Netsirv v. Boxbee, Inc.

by McDermott Will & Emery on

In a decision to institute post-grant review, the Patent Trial and Appeal Board (PTAB or Board) clarified the importance of corroboration to establish the credibility of testimony relating to prior public use in a post grant...more

Progressive Obtains No Insurance at Federal Circuit - Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.

by McDermott Will & Emery on

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more

The Suddenly Offensive Claim of Patent Invalidity

by Thompson Coburn LLP on

At the heart of almost every claim of patent infringement is a battle fought over the validity of the patent at issue. Born out of the idea that an invalid patent cannot be infringed, accused infringers have defended...more

PTAB Petition Must Specifically Explain the Grounds for Invalidity - Apple Inc., v. ContentGuard Holdings, Inc.

by McDermott Will & Emery on

In a trio of orders addressing the extent of express explanation required in a petition for post-grant review, the Patent Trial and Appeal Board (PTAB or Board) found each petition defective for lack of explanation regarding...more

What Is the Latest on Amendments in PTAB Proceedings?

by Foley & Lardner LLP on

Among other topics, a recent web conference hosted by George Quillin and Jeff Costakos tackled the latest developments in amendment practice before the PTAB. The conference addressed the very recent Federal Circuit...more

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

by McDermott Will & Emery on

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

Is The Deck Stacked Against Patent Owners In The PTAB?

by Robins Kaplan LLP on

Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

PTAB Rejects End-Around the IPR Printed Publication Requirement

Post Grant Review provides a breath of fresh air to Patent Office patentability challenge procedures by allowing prior sales and prior uses as eligible prior art. But, of course, PGR is only available for post-AIA patents and...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

Effect On Settlement Of Post-Grant Patent Review Proceedings

by JAMS on

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

First Inventor to File System Dictates Changes in Patent Filing Strategies

by Reed Smith on

One of the most significant provisions of the recently enacted America Invents Act (AIA), the change from a "first to invent" system to a "first inventor to file" system, will go into effect March 16, 2013. Currently, the...more

The America Invents Act: All Grown Up in 2013

by Buchalter on

The America Invents Act (AIA), which was commonly referred to as the “patent reform bill,” was signed into law in 2011, rolled out in 2012 and 2013, and business owners are still wondering what, if anything, it means to them....more

The First-to-File Patent System is Coming - Optimize Your System Now

On March 16, 2013, the "first-to-file" provisions of the America Invents Act ("AIA"), will take effect, replacing the current first-to-invent system. Here we provide specific recommendations to optimize protection of your...more

Top Ten Reasons To File Your Patent Applications Before March 16, 2013

by Pepper Hamilton LLP on

The recently enacted America Invents Act (AIA) introduces major changes to the U.S. patent laws, with some significant provisions taking effect on March 16, 2013. These provisions provide several compelling reasons to file...more

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