Post-Grant Review

News & Analysis as of

IP Matters, Fall 2015

Textile Copyright Cases Ripe for ADR - While normally focused on music and media matters, copyright lawyers in California have grown busy with something else: fabrics. Hundreds of textile copyright suits involving fabric...more

Is Inter Partes Review Set for Supreme Court Review?

In re Cuozzo Speed Tech., LLC presented the Federal Circuit with its first opportunity to address important, open questions about how the Patent Trial and Appeal Board (PTAB) handles its relatively new Inter Partes Review...more

Which Is Better – Patent Arbitration Or Patent Post-Issuance Proceedings?

Tom Brady, New England Patriots quarterback, has seemingly won his dust-up with the National Football League over the air pressure in footballs. Brady received a four-game suspension after an NFL investigation of...more

Proposed Legislation Could Change the Way Motions to Amend IPR and PGR Claims Are Handled

Last week, a proposal was made in the United States Senate to utilize the United States Patent and Trademark Office (“USPTO”) reexamination process to examine amended claims proposed during an Inter Partes Review (“IPR”)...more

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

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.

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board)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

Post-Grant Challenges in Life Sciences: A Midyear Assessment

The America Invents Act established inter partes review and post-grant reviews mechanisms to challenge the validity of issued United States patents. These procedures were created to improve patent quality, and were introduced...more

Federal Circuit: PTAB’s Claim Construction Standard Is BRI, but Sometimes with an Obligation - Power Integrations v. Lee

In a decision with potentially far-reaching impact, U.S. Court of Appeals for the Federal Circuit concluded that the Board of Patent Appeals and Interferences (Board) in arriving at a claim constructions, is obligated to...more

Intellectual Property Newsletter - September/October 2015

PTAB Update on Inter Partes Review - On August 19, 2015, the Director of the USPTO released a blog post reporting on the state of post-grant review proceedings created by the Leahy-Smith America Invents Act of 2011 and...more

IPR estoppel might not be so scary

The rules for post-grant proceedings established by the America Invents Act (AIA) provide that once the Patent Trial & Appeal Board (Board) renders a final written decision, a petitioner in an inter partes review (IPR) is...more

The Suddenly Offensive Claim of Patent Invalidity

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

PGR Order Offers Insight Into Successful and Unsuccessful Discovery Requests

Parties to inter partes review and post grant review proceedings have continued to struggle to find the right formula in successfully navigating the PTAB’s requirements for a motion for additional discovery. In American...more

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

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

Hedge Fund Troll Undetered by Initial Setbacks

Kyle Bass and his hedge funds, the Coalitions for Affordable Drugs LLC, have failed in several of their initial attempts to knock out drug patents. In two decisions handed down late last month, the Patent Trial and Appeal...more

New PTAB Trial Rules Proposed

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

USPTO Introduces Second Wave of PTAB Rule Changes

On August 20, 2015, the US Patent and Trademark Office (“USPTO”) issued a Proposed Rule containing amendments to the Rules of Practice governing proceedings before the Patent Trial and Appeal Board (“PTAB”). This proposed...more

Summary of PTO’s Proposed Rules Changes for AIA Proceedings

The America Invents Act (AIA) was enacted into law on Sept. 16, 2011, and the U.S. Patent and Trademark Office implemented rules for governing the inter partes review, post-grant review, transitional program for covered...more

Views from the Director's Office on Post-Grant Reviews by the PTAB

Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce Michelle Lee took the occasion of the release of the revised PTAB Guidances last Thursday to provide the patent community with some statistics...more

Concerned (or not) that the same three-judge panel makes the IPR institution decision and conducts the trial? The USPTO wants to...

On Tuesday, August 25, the United States Patent and Trademark Office (USPTO) opened for public comment a proposed pilot program for inter-partes review proceedings (IPRs), one of the patent post-grant review proceedings made...more

Estoppel After Final Written Decisions in IPR and PGR Proceedings

The past few months have shed some light on the Patent Trial and Appeal Board’s approach to estoppel in post-grant proceedings. Estoppel, under 35 U.S.C. §§ 315(e)(1) (for inter partes review) and 325(e)(1) (for post-grant...more

What Is the Latest on Amendments in PTAB Proceedings?

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

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the ability...more

Is One APJ Enough For Post Grant Institution Decisions?

A pilot program proposed by the U.S. Patent and Trademark Office would have a single Administrative Patent Judge (APJ), as opposed to a panel of three, decide whether to institute trial in a post grant patent proceeding, such...more

Attorney Fees for Post-Grant Patent Challenge Proceedings Before the USPTO May Be Recoverable in Exceptional Cases Under 35 U.S.C....

Parties accused of patent infringement are turning more and more to post-grant challenge proceedings at the United States Patent and Trademark Office (“USPTO”) as a faster and cheaper means for invalidating the asserted...more

Patent Board’s Proposed New Rules for PTAB Trials

The PTAB issues its second round of proposed rule changes. The Patent Trial and Appeal Board (PTAB) just issued its second round of proposed rule changes to post-patent issuance review proceedings (Inter Partes Reviews,...more

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