News & Analysis as of

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

Post-grant review, continued: Inter partes, covered business methods

In my last post, I detailed some of the most common frustrations with patent litigation and how the U.S. Patent and Trademark Office offers alternative ways to challenge issued patents. I provided descriptions of two of the...more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

Estoppel effects of post-grant patent proceedings under the AIA

By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous...more

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

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

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

24 Results
|
View per page
Page: of 1