Post-Grant Review

News & Analysis as of

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

USPTO Announces Second Round of AIA Rule Changes

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) announced another set of proposed changes to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the America Invents Act (AIA)....more

The PTAB’s Proposed Rule Changes (August 20, 2015)

Patent owners can include expert testimony with a preliminary response. The Patent Office (Office) conducted a nationwide listening tour in April and May of 2014 to gauge the effectiveness of the rules governing...more

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

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

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

Will New PTAB Rules Impact IPRs Filed By Kyle Bass Hedge Fund?

On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification”...more

PTAB Summer Package of Proposed Rule Changes Now Available and Open for Public Comment

On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments...more

US Patent Trial and Appeal Board proposes rule changes to AIA trials

The United States Patent and Trademark Office (USPTO) recently issued its proposed changes to the rules for AIA trials, which include inter partes review (IPR), post-grant review (PGR) and the transitional program for covered...more

U.S. Patent and Trademark Office Announces Proposed Changes to AIA Proceedings

On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for...more

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented...more

USPTO Proposes New Rules For PTAB Trial Proceedings

Practice Points: USPTO responds to public comments on PTAB trial procedures, publishes several proposed rule changes for 60 day comment period....more

USPTO Issues Second Round of Proposed Changes to the Rules of Practice Before the Patent Trial and Appeal Board

The America Invents Act (AIA) was enacted into law on September 16, 2011. A major provision of the AIA provided for a number of post grant proceedings to be heard by the rebranded Patent Trial and Appeal Board (PTAB). ...more

An Invalidity Argument Without a Home? The PTAB's Discretion to Ignore Grounds for Invalidity

By Shaun R. Snader[1] & George C. Beck The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster,...more

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

PTAB Decisions Add Some Clarity to Estoppel in AIA Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”) created three new mechanisms for members of the public, including competitors, to challenge the validity of an issued U.S. Patent. As of June 30, 2015, 3,160 petitions for inter...more

Rep. Goodlatte Releases Report on H.R. 9

Last week, Rep. Bob Goodlatte, Chairman of the House Judiciary Committee, released a 200-page Report on H.R. 9, "The innovation Act," introduced by Chairman Goodlatte with several co-sponsors earlier this year. The bill sets...more

Federal Circuit Adopts USPTO Positions in Clarifying Ground Rules For CBM Review, Holds Versata Pricing Patent Invalid

The Leahy-Smith America Invents Act (AIA) introduced post-grant administrative proceedings as a new mechanism for challenging the validity of issued patents without the need to resort to federal court litigation. In a recent...more

Catalog Search Posted On Claim Preclusion Does Not Bar Additional Discovery Relating to Privity Challenge in Later-Filed IPR...

The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion. Informative opinions are not binding; they rather provide guidance on rules and...more

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