News & Analysis as of

Post-Grant Review

USPTO Seeking Potential Reforms to PTAB Proceedings

by Brinks Gilson & Lione on

On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative. Patent Trial and Appeal Board (“PTAB”) proceedings created under the America Invents Act (“AIA”) have been in...more

Sovereign Immunity and Inter Partes Review: Protection From Post-Grant Proceedings for Universities and Affiliated Entities?

by Faegre Baker Daniels on

Since its inception in 2012, the Patent Trial and Appeal Board (PTAB) has invalidated a slew of patents in inter partes review (IPR), leading some to characterize the nascent body as the “patent death squad.” As such,...more

Issue Three: Keeping Tabs on the PTAB

by Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

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

Practice Tips Learned From the Inaugural PTAB Bar Association Conference

by Brinks Gilson & Lione on

The newly formed PTAB Bar association held its inaugural conference in Washington, D.C. from March 1-3. More than 400 people were in attendance, including a mix of practitioners, in-house counsel, PTAB administrative law...more

Narrowing Jurisdiction in Covered Business Method Proceedings

In 1998, the United States Court of Appeals for the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., which upheld the patentability of business methods in the United States. Since...more

PTAB Declines to Institute Post-Grant Review Because “New” Figures in Design Patent Were Sufficiently Supported in Parent...

Under the America Invents Act, post-grant reviews are only available for patents having at least one claim with an effective filing date of March 16, 2013 or later. If this condition is not satisfied, the Patent Trial and...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

New Amendments to SIPO's Guidelines for Patent Examination

by Brinks Gilson & Lione on

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options...more

Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business...

by Brooks Kushman P.C. on

A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the...more

Chemistry & Nanotechnology Developments to Watch in 2017

As cases and outcomes make their way into the news this year, we will be watching the following developments closely and sharing them with the IP community....more

Fish & Richardson’s Post-Grant Report 2016

by Fish & Richardson on

2016 marked the fourth anniversary of the America Invents Act (AIA). The Patent Trial and Appeal Board (PTAB) was once again the forum of choice for challenging patentability of claims, surpassing the Eastern District of...more

Under the Same Precedent, Different Estoppel Standards Have Developed in the PTAB and the District Courts

While Congress was debating the provisions of the America Invents Act (AIA), some lawmakers proposed that inter partes review (IPR) and post-grant review (PGR) should be a substitute for invalidity challenges at district...more

Preliminary Injunction Maintained Despite Adverse Decision in Parallel Post-Grant Review

by McDermott Will & Emery on

Addressing the merits of an injunction in a case where the district court and the Patent Trial and Appeal Board (PTAB) disagreed as to the validity of a patent in parallel proceedings, the US Court of Appeals for the Federal...more

IPR Estoppel Provisions May Not Be That Scary After All

by Pepper Hamilton LLP on

IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic. Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped...more

State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

by Pepper Hamilton LLP on

In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial and Appeal Board (the “Board”) upheld a defense of sovereign immunity asserted by the University of Florida Research Foundation (the...more

Passed House of Representatives Bill May Affect the Burden of Persuasion for Patentability of Amended Claims in IPRs

by Brinks Gilson & Lione on

The U.S. House of Representatives recently passed a bill that, if enacted, could make it easier for patent owners to amend their claims during post-grant proceedings such as inter partes reviews (IPR). The proposed law would...more

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take...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

Potential Intellectual Property Issues on the Table in the 115th Congress

by Ropes & Gray LLP on

Over the past decade, intellectual property issues have often taken center stage in Congress. The America Invents Act, passed in 2011, changed patent landscape in many ways, most notably by changing the U.S. patent system...more

Final Written Decision Demonstrates Breadth of PGR Review

by McDermott Will & Emery on

In a Final Written Decision (FWD) in a post-grant review (PGR), the Patent Trial and Appeal Board (PTAB) addressed post-grant review eligibility, enablement, written description and anticipation. US Endodontics, LLC v. Gold...more

CAFC Upholds Preliminary Injunction Despite Unpatentability Ruling of PTAB

by Foley & Lardner LLP on

This week in Tinnus Enterprises LLC v. Telebrands Corp. (Moore, Wallach and Stoll), the Federal Circuit upheld the grant of a preliminary injunction by the Eastern District of Texas, despite a PTAB Final Written Decision...more

Analysing the PTAB in 2016

Originally published in Managing Intellectual Property - January 30th, 2017. All post-grant proceedings at the USPTO start with the filing of a petition and progress through two general phases—a pre-institution phase and...more

PTAB Final Written Decision Not Binding in Federal Circuit Review of Preliminary Injunction Award

The interplay between infringement actions brought in district court and parallel USPTO post-grant proceedings can lead to interesting outcomes. One example is the Federal Circuit’s decision in Tinnus Enterprises, LLC v....more

2016 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2016 PTAB Year in Review. We begin with a look at 2016 activity at the Patent Trial and Appeal Board (PTAB), which again ranked as the busiest jurisdiction in the...more

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