News & Analysis as of

Challenging Prior Art Status In Post-Grant Proceedings

An inter partes review (“IPR”) proceeding allows a party to challenge the validity of a patent before the Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”). In an IPR proceeding,...more

Docs @ BIO -- Federal District Court vs. the PTAB

Yesterday, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before...more

IP Buzz - Post Grant Practice - June 2014

In this issue: - Terminal Disclaimer Cannot be Used to Circumvent IPR Review Standard - IPR Spotlight Series: Evaluating Whether to File a Preliminary Patent Owner Response - Unscathed by Review: Recent...more

What Australian companies need to know about ‘patent oppositions’ in the US

Many Australian companies will be familiar with the pre-grant patent oppositions that are available under Australian law. Similarly, many Australian companies will be familiar with post-grant patent oppositions before the...more

PTAB Denies Late Attempt to Alter the Applicable Claim Construction Standard in an IPR

A recent decision from the Patent Trial and Appeal Board (the “Board”) highlights the different claim construction standards that are ordinarily applicable in post-grant review proceedings and in district court, and...more

Federal Circuit Finds Consumer Watchdog Lacks Standing to Appeal Reexamination Decision Upholding WARF Stem Cell Patent

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Federal Circuit held that an inter partes reexamination requester must establish an injury in fact sufficient to confer Article III standing in order to appeal...more

Reasons to Think Twice Before Initiating Inter Partes Review

There has been a lot of hype about inter partes review – including by us – and for good reason. The pro-complainant bent of the rules is turning out to be pro-complainant in effect as well, at least when you look at the...more

Snapshot Overview of Options for Post-Issuance Challenges Before the PTAB

There are three available types of post-issuance challenges to the validity of a patent: (1) Inter Partes review; (2) Transitional Program for Covered Business Method Patents; and (3) Post-Grant Review. Another option not...more

Federal Circuit to Review PTAB Post-Grant Review Proceedings in SAP v. Versata: PTAB Jurisdiction; Grounds on Which Invalidity May...

On September 16, 2012, post-grant proceedings became available as means to challenge patent validity pursuant to the America Invents Act. The post-grant proceedings take place before the Patent Trial and Appeal Board...more

First AIA Roundtable Hints at More Conservative Approach to PTAB Review

On April 15, 2014, the Patent Trial and Appeal Board (“PTAB”) hosted the first in a series of eight scheduled roundtable discussions intended to share information about the new America Invents Act (“AIA”) trials, including...more

Cumulative Art Rejections v. Estoppel: Balancing Competing Interests In IPR Petitions

Inter Partes Review, or IPR, is one of the new procedures implemented through the Leahy-Smith America Invents Act that challenges a patent’s validity at the Patent Trial and Appeals Board (PTAB) of the United States Patent...more

Stays Pending Inter Partes Review - New Strategies For The New Rules

As the Patent Trials and Appeals Board (“PTAB”) works through the first wave of filings under the new inter partes review (“IPR”) procedures, district courts are addressing an increasing volume of requests for stays pending...more

Intellectual Property Bulletin - Winter 2014

The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more

Demonstratives in Post-Grant Proceedings  [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- demonstratives in post-grant...more

PTAB = Stickler on Detailed Inter Partes Review Rules

Running a bit short on space in your IPR brief? Think you might sneak one past the Board by stretching those margins by a tenth of an inch or two? Think again. It should come as no surprise given that the inter partes review...more

Dominion Dealer Solutions Seeks Review of USPTO Decisions Denying Inter Partes Review

On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review...more

The impact of inter partes review on patent litigation

The America Invents Act (AIA) created a new post-grant review proceeding in the USPTO, the inter partes review or IPR. On September 16, 2012, the USPTO stopped accepting petitions for inter partes reexamination and the IPR...more

The America Invents Act (AIA) Affects Design Patents, Too

Over the last few years, companies have increasingly recognized the value of design patents, which are directed to the ornamental (non-functional) appearance of a product....more

Three New Tools to Challenge Patents

Among the most significant changes made by the America Invents Act (AIA) are the provisions that permit a business to challenge a patent at the U.S. Patent and Trademark Office in litigation-type proceedings, but at a lower...more

Update on Post-Grant Design Patent Challenges

Since our last article on the topic of design patent reexaminations (see “All or Nothing Design Patent Reexaminations: On the Rise,” June 8, 2010), design patents are more popular than ever. Interest in design patents...more

Six-Month Report Card: Post-Issuance Proceedings Under the AIA

Introduction - On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties...more

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013,...more

Patent Office Litigation Update: Impact on Timing [Video]

Donald R. Banowit, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., explains two recent clarifications to the deadlines for filing a petition for inter partes review at the USPTO....more

Intellectual Property Litigation Alert: Post-Grant Review And Inter-Partes Review Are New Alternatives To Federal Litigation

In September 2011, the America Invents Act (AIA) reformed the United States patent statutes. One of the most significant reforms is the change from a "first-to-invent" system to a "first-inventor-to-file" system for new...more

America Invents Act Updates Take Final Form

In a last-minute decision for the 112th Congress, the House of Representatives approved an America Invents Act (AIA) technical-revisions bill as amended by the Senate (H.R. 6621) on January 1, 2013. President Obama is...more

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