Post-Grant Review

News & Analysis as of

PTAB Trials Rule Package Library

Some of you have requested a collection of the rule packages from the PTAB. ...more

Are Ex Parte Reexaminations An Overlooked Method of Challenging Patents?

In the wake of the September 16, 2011, enactment of the America Invents Act (“AIA”), many third-party individuals and organizations began utilizing the newly created post-grant proceedings to challenge the validity of issued...more

PTAB Motion to Amend Study Reveals Opportunities and Risks

The Patent Trial and Appeal Board (PTAB) recently released its Motion to Amend Study on post-grant proceedings to date (4/30/2016). Of the 4,850 total petitions filed, 1,539 had been instituted and completed trials, and...more

U.S. Patent Trial and Appeal Board Designates Five New Post-Grant Review Decisions as “precedential” and Thus Binding on the Board

On May 9, 2016, the Patent Trial and Appeal Board (PTAB) designated as “precedential” four Inter Partes Review (IPR) decisions and one Covered Business Method (CBM) Patent Review decision. This almost triples the total number...more

PTAB Discretion Under 325(d) in Post-Grant Proceedings

The PTAB has interpreted the statutes and rules as giving it broad discretion as to whether to institute inter partes review. Under 35 U.S.C. § 325(d), the PTAB may reject a petition because “the same or substantially the...more

PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter...more

Intellectual Property Newsletter

Shearman & Sterling’s IP litigation team has published its first quarterly newsletter. The newsletter covers a number of current IP topics, including details about soon-to-be enacted federal trade secret legislation, pending...more

Joinder in Post-Grant Proceedings

The complex nature of modern patent litigation has meant that multiple defendants often have interests that align around a single portfolio of patents. This inevitably results in one or more post-grant challenges. The natural...more

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

The United States Patent and Trademark Office has used a “broadest reasonable interpretation” (BRI) standard for claim interpretation when examining pending patent applications. Under the BRI standard, a claim term is...more

Amended PTAB Rules to Take Effect on May 2, 2016

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will...more

If You Amend Claims In A Post Grant Proceeding, Don’t Forget To Supplement Infringement Contentions In Parallel Litigation

The Federal Circuit’s recent decision in Target Training International v. Extended Disc North America tells the cautionary tale of what can happen to a plaintiff who successfully navigates a post grant challenge by amending...more

Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of...

On April 25, 2016, the U.S. Supreme Court heard oral arguments in its first appeal from a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding (“IPR”) under the...more

Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings

On April 26, 2016, the Federal Circuit denied a petition seeking rehearing en banc of its application of the “substantial evidence” standard of review in post-grant administrative proceedings, in the case of Merck & Cie v....more

Of Patent Trolls and Hot Dog Stands -- The Supreme Court Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

Earlier today, the Supreme Court heard oral arguments in the Cuozzo Speed Technologies, LLC v. Lee appeal (Supreme Court docket number 15-466). The Court was considering two issues related to the recently implemented IPR...more

Patent Owners Now Estopped From Relying On PTAB Estoppel

A recent Federal Circuit decision on a writ of mandamus as to the scope of the estoppel provided in 35 U.S.C § 315(e) appears to be contrary to the scope that practitioners and the legislators had in mind when the America...more

Patent Office Issues Final Rule Amending the Rules of Practice for Trials at the PTAB

The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May...more

"After Period of High Invalidation Rates, New US Patent Challenge Procedures May Slow Down to Moderate Pace"

When the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB) began hearing post-issuance patent challenge proceedings under the America Invents Act in September 2012, the PTAB became one of the...more

Legislative Developments in Post-Grant Proceedings

Amidst a spate of high-profile IPR filings in the life sciences space by hedge fund financiers, the biotechnology industry has mobilized behind two chief legislative strategies designed to limit or eliminate its exposure to...more

Patent Office Updates Rules for Post-Grant Proceeding Duty of Candor

The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As...more

USPTO Publishes Substantive Changes to PTAB Rules

On April 1, 2016 the USPTO published the final rules that make substantive changes to the Patent Trial and Appeal Board (PTAB) trial practice rules for inter partes review (IPR), covered business method (CBM), and post-grant...more

Interim IPR Results & Litigation – What Happens At The Board May Not Stay At The Board

The America Invents Acts ("AIA") gives alleged infringers facing an infringement claim a choice—challenge validity in court or in an inter partes review (IPR). Like any choice, consequences have to be considered. The...more

Estoppel Does Not Attach When Petitioner’s Grounds Are Denied As Redundant

Under 35 U.S.C. 315(e)(1), a petitioner in an inter partes review of a claim in a patent that has resulted in a final written decision by the Board may not request or maintain a proceeding before the Patent Office with...more

What "Reasonably" Could Have Been Raised in an Inter Partes Review?

Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore,...more

PTAB rule changes bring few but important changes to the proceedings

In its eagerly awaited final rules, the Patent Trial and Appeal Board (PTAB) largely rebuffed calls for change and clarity, in favor of a flexible common law approach. Over the past twenty-one months, the public provided many...more

Real Party-in-Interest in Post-Grant Proceedings

A party petitioning for inter partes review (IPR) is required to name all real parties-in-interest (RPIs)—this helps ensure proper application of statutory estoppel and assists the Patent Trial and Appeal Board (PTAB) in...more

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