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Pleadings Inter Partes Review (IPR) Proceeding

Knobbe Martens

Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order

Knobbe Martens on

Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Filing an amended complaint does not nullify a dismissal order that was not later...more

Akin Gump Strauss Hauer & Feld LLP

Invalidity Defenses Will Not Be Stricken at Pleading Stage Despite Defendant’s Earlier PGR Petition

A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2018: Petitioners Must Have Premonition to Win

Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more

McDermott Will & Emery

First Complaint Triggers One Year Time Bar for IPR Petition (LG Electronics, Inc. v. Mondis Tech. Ltd.)

Addressing whether a petitioner was time-barred or estopped from requesting inter partes review (IPR) based on a newly filed second complaint, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or...more

Fish & Richardson

First Bass IPR Instituted

Fish & Richardson on

After having its first three IPR petitions denied, yesterday the Patent Trial and Appeal Board (PTAB) instituted the first IPR petition filed by hedge fund manager Kyle Bass and the Coalition for Affordable Drugs II LLC. On...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

Bracewell LLP

Know Them Before They are Famous (or at least final): The Latest USPTO Proposed Rule Changes

Bracewell LLP on

On August 19, 2015, the United States Patent and Trademark Office (USPTO) released proposed rule changes for trials before the Patent Trial and Appeal Board (PTAB). The proposed rule changes were made in response to input...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Finally Proposes Rule Amendments: The More Things Change . . .

More than a year ago, then-Deputy Director Michelle K. Lee posted on the Director's Forum Blog that the USPTO was seeking feedback on PTAB trial proceedings established by the Leahy-Smith America Invents Act ("AIA"). The...more

Orrick, Herrington & Sutcliffe LLP

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

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