Post-Grant Review

News & Analysis as of

Federal Circuit Weighs in on Stay in View of Covered Business Method Review

The first few decisions from the Federal Circuit are starting to trickle in and are sure to bring more upheaval to Patent Office post-grant procedures. In Versata Software, Inc., et al. v. Callidus Software, Inc., the Court...more

IP News You Need to Know - November 2014

In This Presentation: - USPTO POST-GRANT PROCEEDINGS: LESSONS LEARNED AFTER 2 YEARS - Rationales for Denial of Petition - Rationales for Claims Surviving Final Decision - Considerations for Multi-Forum...more

Timeliness – The Devil Is in the Details (a.k.a. Rules)

GEA Process Engineering, Inc. v. Steuben Foods, Inc. - In an order issued by the Patent Trial and Appeal Board (PTAB or Board), the Board expunged exhibits from the records of five related cases on the basis of...more

Don’t Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems

The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within...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

A Cautionary Tale for Universities about Patent Ownership Rights from the Lone Star State

A recent decline in patent litigation has been attributed to the evolving patent eligibility standard, as well as to an increase in post-grant review proceedings at the Patent Office, now reported to be “the second-biggest...more

Recent Developments in Patent Law for Medical Device Companies

In This Presentation: - Recent Patent Cases From The Supreme Court - Medical Device Patent Statistics and Cases - USPTO Post-Grant Proceedings: Lessons Learned After Two Years - Excerpt from Recent Cases...more

Post-Grant Insights: The Significance of a Three-Judge Panel [Video]

The three-judge panels at the U.S. Patent Trial and Appeal Board (PTAB) are something that we've never seen before in this country. The feeling that our clients are getting a fair and careful read from this really experienced...more

Post-Grant Insights: The Need for Seamless Coordination of District Court & PTAB Litigation [Video]

The key to a critical strategy is having a vision for how you are going to win the war, even if you lose individual battles. By adding the U.S. Patent Trial and Appeal Board (PTAB) judges to District Court to the jury, a...more

Do-Gooders Need Not Apply

According to its mission statement, Consumer Watchdog is a non-profit entity “dedicated to providing an effective voice for taxpayers and consumers in an era when special interests dominate public discourse, government and...more

Post-Grant Insights: The Preparation and Pace of the PTAB [Video]

The motions that are filed at the U.S. Patent Trial and Appeal Board all need to be authorized in advance. In other words, attorneys and their clients have to request a phone conference and there's a very active practice of...more

CBM Review Cannot Proceed if Petitioner Filed Civil Suit Challenging Patent’s Validity Prior to Filing Review Petition

SecureBuy LLC v. Cardinal Commerce Corp. - Addressing the circumstances under which a Covered Business Method (CBM) patent review may proceed, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal...more

Post-Grant Insights: The Impact of PTAB Appeals on the Federal Circuit [Video]

The Federal Circuit could receive a thousand appeals per year from decisions of the Patent Trial and Appeal Board (PTAB). That means that within one year we could effectively expect a doubling in the patent appeal load in the...more

Post-Grant Insights: Key Considerations in PTAB Oral Hearings [Video]

At the Patent Trial and Appeal Board (PTAB) there is a live proceeding that is simply called an oral hearing. During the hearing, each side has a limited amount of time to present their arguments to the PTAB judges; it’s...more

The Patent Trial and Appeal Board Second Anniversary: Reflections and Strategies For The Years Ahead

What a difference two years can make. In 2012, the America Invents Act (“AIA”) created new proceedings to challenge the validity of claims in issued patents. These proceedings are administered by the United States...more

IP Strategies for Software Tech Companies

In This Presentation: - Key IP Concerns for Software Tech Companies - New Post-Grant Proceedings for Challenging Patents - Impact of Alice on Software Patents and the Importance of Building a Strong Patent...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

Second Petition Seeking Post Grant Review is Filed

Finally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review Petition. Accord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010. ...more

Post-grant review, continued: Inter partes, covered business methods

In my last post, I detailed some of the most common frustrations with patent litigation and how the U.S. Patent and Trademark Office offers alternative ways to challenge issued patents. I provided descriptions of two of the...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

Federal Circuit Review (August 2014)

Post Grant Review of Patent Favors Stay of Litigation - In VIRTUALAGILITY INC. v. SALESFORCE.COM, INC., Appeal No. 14-1232, the Federal Circuit reversed the district court's denial of a motion to stay pending a post...more

PTO post-grant review: Patent issuance is not end of the line

So, you find yourself a defendant in a patent infringement suit. Some patent holder has filed a lawsuit claiming that your company is infringing on their patented technology. The patent holder threatens to shut your business...more

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Effect On Settlement Of Post-Grant Patent Review Proceedings

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 Petition for Post Grant Review Filed

At long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008. The popular “Rainbow Loom” is the commercial...more

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