News & Analysis as of

Post-Grant Review United States Patent and Trademark Office

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

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

Practice Tips Learned From the Inaugural PTAB Bar Association Conference

by Brinks Gilson & Lione on

The newly formed PTAB Bar association held its inaugural conference in Washington, D.C. from March 1-3. More than 400 people were in attendance, including a mix of practitioners, in-house counsel, PTAB administrative law...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

Chemistry & Nanotechnology Developments to Watch in 2017

As cases and outcomes make their way into the news this year, we will be watching the following developments closely and sharing them with the IP community....more

Fish & Richardson’s Post-Grant Report 2016

by Fish & Richardson on

2016 marked the fourth anniversary of the America Invents Act (AIA). The Patent Trial and Appeal Board (PTAB) was once again the forum of choice for challenging patentability of claims, surpassing the Eastern District of...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

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

PTAB Final Written Decision Not Binding in Federal Circuit Review of Preliminary Injunction Award

The interplay between infringement actions brought in district court and parallel USPTO post-grant proceedings can lead to interesting outcomes. One example is the Federal Circuit’s decision in Tinnus Enterprises, LLC v....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

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

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

Double-Checking the PTAB

By Bryan K. Wheelock, Principal The Federal Circuit’s docket is burgeoning with Patent Office appeals.  Three years ago there were 118 appeals from the USPTO pending before the Federal Circuit. Today there are 578.  The bulk...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

Supreme Court denies Cert in Cases Challenging Constitutionality of AIA Trials

by Brooks Kushman P.C. on

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

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

by Brooks Kushman P.C. on

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to...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

by Fenwick & West LLP on

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

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

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 Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

by Robins Kaplan LLP on

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

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

by WilmerHale on

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

If You Amend Claims In A Post Grant Proceeding, Don’t Forget To Supplement Infringement Contentions In Parallel Litigation

by Reed Smith on

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

Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of...

by Brooks Kushman P.C. on

On April 25, 2016, the U.S. Supreme Court heard oral arguments in its first appeal from a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding (“IPR”) under the...more

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