A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why....more
Is the little-used CBM patent review program the key to passage of § 101 legislation?
Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101.
The unabashed...more
We recently posted about the panel opinion in Amazon.com v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR. In addition to assessing...more
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more
2/11/2019
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more
A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a...more
Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more
8/2/2017
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112