Post-Grant Review

News & Analysis as of

Legal FAQ: Introduction to Patent Litigation

Who enforces a patent? When can a district court patent case be filed? What does the patent holder have to prove to win an infringement suit? Fenwick patent litigators Charlene Morrow and Dargaye Churnet cover these and other...more

Patent Due Diligence and Evaluation After the AIA

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims...more

Hot Topics: AIA Estoppel Provisions Clarified

The Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., has shed some light on the estoppel provisions in America Invents Act (AIA) post-grant proceedings. Like the estoppels in...more

Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more

PTAB Provides Procedural Guidance, Designates Five Opinions as Precedential

On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business...more

The Start of Something Big? PTAB Issues First PGR Final Decisions

Post Grant Review (“PGR”) is a Patent Trial and Appeal Board (“PTAB”) proceeding established under 35 U.S.C. § 321 that permits the PTAB to review the patentability of claims in a patent based on any grounds under 35 U.S.C. §...more

Supreme Court Upholds the PTAB’s Status Quo in Cuozzo

On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies, LLC v. Lee, which unanimously upheld the “broadest reasonable construction” claim construction standard (BRI) used by the Patent Trial and...more

First Post-Grant Review Written Opinions from PTAB Invalidate Two Patents for Livestock Valuation

The Patent Trial and Appeal Board (PTAB) issued its first written opinions based on a trial of the relatively new Post-Grant Review (PGR) proceeeding and genetic factors. American Simmental Association (ASA) brought the...more

First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity,...more

The PTAB Review - June 2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Strategic Options for Challenging 3rd Party Patents

You have been accused of infringing a patent and you can’t believe that the asserted patent could ever have been granted. What can you do to take the offensive in attacking the asserted patent? Beginning with the...more

PTAB Institutes Post Grant Review Against Chemical Process Patent

The USPTO Patent Trial and Appeal Board has instituted Post Grant Review (PGR) proceedings against a patent directed to a process for treating contaminated media. The petition for PGR challenged that patent on written...more

The First Wave of Post-Grant Appeals

2015 brought the first wave of Federal Circuit decisions in appeals from inter partes review (IPR) and covered business method (CBM) proceedings. The trend has been deference: in 83 post-grant appeals, the Federal Circuit has...more

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

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

281 Results
|
View per page
Page: of 12
JD Supra Readers' Choice 2016 Awards

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×