Post-Grant Review Patents

News & Analysis as of

Supreme Court denies Cert in Cases Challenging Constitutionality of AIA Trials

On October 11, 2016, the US Supreme Court denied petitions for certiorari filed in two cases by parties challenging the constitutionality of post grant proceedings instituted under the Leahy-Smith America Invents Act....more

Post-Grant Review May Be Used to Invalidate Patents Directed to Patent-Ineligible Subject Matter

Addressing patent-eligible subject matter issues, the Patent Trial and Appeal Board (PTAB or Board) issued a final written decision in a post-grant review (PGR) finding all claims of a newly issued patent unpatentable under...more

Bass’s First IPR Decision Rendered – Victory for Patent Owner, Shire Lpc

If Kyle Bass’s Coalition for Affordable Drugs Series II hedge fund was hoping to reap a windfall from short positions in Shire Plc’s stock this week, it was dealt a major setback by a Patent Trial and Appeal Board (PTAB)...more

Post-Grant Patent Amendment – Canadian and US Options

On the long and sometimes bumpy road of patent prosecution, a Notice of Allowance can be a welcome sign that you are nearly at your destination: a granted patent. But the journey is not over yet. At the time of grant, what if...more

PTAB Reversed Based on Non-Analogous Art Theory

Although In re Natural Alternatives LLC (Fed. Cir. August 31, 2016) is not an IPR appeal, it should be of interest to those who care about IPRs and PGRs because it reflects a successful appeal from the Patent Trial & Appeal...more

Netsirv v. Boxbee, Inc. (PTAB 2016)

A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more

A legal look at Patent Trial and Appeal Board decisions and trends: PTAB Statistics - Then and Now

The Inter Partes Review (IPR) and Covered Business Method (CBM) procedures were enacted on September 16, 2012. Since then, the PTAB has released data on a monthly basis to illustrate the trends in the various petitions and...more

The Specter of Alice Looms Large Even in PGRs

On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v....more

PTAB Issues Only Its Third Post-Grant Review Decision to Date, Invalidates Storage Container Tracking Claims Directed to...

On August 2, 2016, the Patent Trial and Appeal Board (PTAB), in proceeding PGR2015-00009, invalidated a patent for storage container tracking and delivery as being directed to patent-ineligible subject matter under 35 U.S.C....more

In First Set of Post-Grant Review Decisions, PTAB Strikes Down Patents Based on Alice

Addressing for the first time the issue of patent validity in the context of an America Invents Act post-grant review, the Patent Trial and Appeal Board (PTAB or Board) invalidated two livestock patents as unpatentable under...more

USPTO News Briefs - July 2016

PTAB Introduces New Patent Review Processing System - In a post on the USPTO's "Director's Forum" blog, the Chief Judge for the Patent Trial and Appeal Board (PTAB), David P. Ruschke, announced that the PTAB was...more

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

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

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 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

First-Ever Post-Grant Review Decisions Invalidate Patents

On June 13, 2016, the Patent Trial and Appeal Board (PTAB) invalidated two livestock valuation patents for being directed to patent ineligible subject matter in the first decisions to issue under the America Invents Act (AIA)...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

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

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 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

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

Patent Owners Now Estopped From Relying On PTAB Estoppel

A recent Federal Circuit decision on a writ of mandamus as to the scope of the estoppel provided in 35 U.S.C § 315(e) appears to be contrary to the scope that practitioners and the legislators had in mind when the America...more

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