News & Analysis as of

Post-Grant Review Inter Partes Review (IPR) Proceeding

PTAB Releases March 2017 Stats

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its March 2017 statistics. The end of March marking the halfway point in the USPTO's fiscal year, the overall totals for fiscal year 2017 (FY 2017) are coming...more

Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...more

USPTO Seeking Potential Reforms to PTAB Proceedings

by Brinks Gilson & Lione on

On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative. Patent Trial and Appeal Board (“PTAB”) proceedings created under the America Invents Act (“AIA”) have been in...more

Sovereign Immunity and Inter Partes Review: Protection From Post-Grant Proceedings for Universities and Affiliated Entities?

by Faegre Baker Daniels on

Since its inception in 2012, the Patent Trial and Appeal Board (PTAB) has invalidated a slew of patents in inter partes review (IPR), leading some to characterize the nascent body as the “patent death squad.” As such,...more

Issue Three: Keeping Tabs on the PTAB

by Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Narrowing Jurisdiction in Covered Business Method Proceedings

In 1998, the United States Court of Appeals for the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., which upheld the patentability of business methods in the United States. Since...more

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Under the Same Precedent, Different Estoppel Standards Have Developed in the PTAB and the District Courts

While Congress was debating the provisions of the America Invents Act (AIA), some lawmakers proposed that inter partes review (IPR) and post-grant review (PGR) should be a substitute for invalidity challenges at district...more

IPR Estoppel Provisions May Not Be That Scary After All

by Pepper Hamilton LLP on

IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic. Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped...more

State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

by Pepper Hamilton LLP on

In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial and Appeal Board (the “Board”) upheld a defense of sovereign immunity asserted by the University of Florida Research Foundation (the...more

Passed House of Representatives Bill May Affect the Burden of Persuasion for Patentability of Amended Claims in IPRs

by Brinks Gilson & Lione on

The U.S. House of Representatives recently passed a bill that, if enacted, could make it easier for patent owners to amend their claims during post-grant proceedings such as inter partes reviews (IPR). The proposed law would...more

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take...more

Analysing the PTAB in 2016

Originally published in Managing Intellectual Property - January 30th, 2017. All post-grant proceedings at the USPTO start with the filing of a petition and progress through two general phases—a pre-institution phase and...more

2016 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2016 PTAB Year in Review. We begin with a look at 2016 activity at the Patent Trial and Appeal Board (PTAB), which again ranked as the busiest jurisdiction in the...more

Issue One: Keeping Tabs on the PTAB

by Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

by Fenwick & West LLP on

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Patent Owners’ Options After Claims Are Cancelled in AIA Post-Grant Proceedings

by WilmerHale on

The America Invents Act (AIA) instituted sweeping changes in U.S. patent law, including creating new proceedings for third parties to challenge an issued patent before the Patent Trial and Appeal Board (PTAB). These new...more

Evidentiary Thresholds for Establishing Prior Public Use in Post-Grant Proceedings

Petitioners in post-grant review (PGR) and covered business method (CBM) proceedings have a greater arsenal of prior art to develop patentability challenges than in inter partes review (IPR) proceedings. While IPR challenges...more

Terminating a Post-Grant Proceeding By Settlement Before the Patent Trial and Appeal Board Has “Decided the Merits”

Voluntarily terminating a post-grant proceeding before the Patent Trial and Appeal Board (PTAB) prior to a final written decision may be appropriate in situations where the parties have agreed to settle the proceeding....more

Patent Invalidity Offense: When Is District Court Action the Better Option Over IPR, PGR or CBM?

by BakerHostetler on

It’s Monday morning after the Thanksgiving holiday. Easing back into the workweek with the lingering effects of turkey, stuffing and a miraculous Ohio State victory still sapping my brain, I open the court docket report....more

PTAB Estoppel: Recent Guidance on What Grounds of Challenge “Reasonably Could Have Been Raised” in an Earlier Proceeding

The scope of estoppel under the America Invents Act is becoming clearer in view of recent Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions. As discussed in our earlier article, the Federal Circuit has...more

PTAB Post-Grant Fees Slated To Increase

by Foley & Lardner LLP on

The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it...more

Federal Circuit Review | October 2016

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

by Weintraub Tobin on

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”). An...more

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