News & Analysis as of September 22, 2024

America Invents Act › Joinder

+ Follow

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

Senator Coons And Co-Sponsors Introduce the PREVAIL Act

McDonnell Boehnen Hulbert & Berghoff LLP on 7/6/2023

In addition to his efforts regarding patent subject matter eligibility law (see "Senate Bill Proposed to Provide Subject Matter Eligibility Solution", co-sponsored with Senator Tillis), Senator Coons, joined by Senators...more

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

Morrison & Foerster LLP - Federal Circuitry on 9/9/2020

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well...more

Joined Parties Have Rights Too

McDermott Will & Emery on 7/24/2020

In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies...more

Court’s Strict Interpretation of Timing Requirement May Force Patent Validity Challenges in Two Forums

Sunstein LLP on 5/19/2020

The America Invents Act (“AIA”), signed into law in 2011, introduced inter partes review (“IPR”), which allows parties to challenge the validity of patent claims in proceedings before the Patent Trial and Appeal Board...more

Federal Circuit Says PTAB Joinder Rules Contrary to Law

Fish & Richardson on 3/26/2020

The Federal Circuit has ruled in Facebook, Inc. v. Windy City Innovations, LLC that the Patent Trial and Appeal Board’s (PTAB) practice of permitting petitioners to join themselves as parties to existing reviews and adding...more

In Facebook v. Windy City Innovations, Federal Circuit Ends Self-Joinder for Already Filed IPRs

Holland & Knight LLP on 3/24/2020

The U.S. Court of Appeals for the Federal Circuit held in an opinion filed March 18, 2020, that petitioners to the Patent Trial and Appeal Board (PTAB) may not join themselves as a party to their earlier filed inter partes...more

PTAB Precedential Decision Recap

Jones Day on 9/30/2019

The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...more

August Boardside Chat Recap Regarding Trial Practice Guide Update

Jones Day on 8/13/2019

On August 8, 2019, the Patent Trial Appeal Board held a Boardside Chat webinar to discuss the July 2019 changes to the AIA Trial Practice Guide. Vice Chief Administrative Judges Michael Tierney and Tim Fink led the discussion...more

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Jones Day on 7/24/2019

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

Chicago-Kent Journal of IP: Precedential Opinion Panel Resolves Conflicts in PTAB Opinions on Joinder

Jones Day on 6/10/2019

Since its inception through the Leahy-Smith America Invents Act (“AIA”), the proper role and function of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“PTO”) in adversarial post-grant...more

"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

Knobbe Martens on 5/24/2019

For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever. Late last year, the PTAB...more

PTAB Strategies and Insights - February 2019: Federal Circuit Issues Further Guidance On AIA Proceeding Standing To Appeal

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/1/2019

Joinder Petitioners Have Standing To Appeal - In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more

PTAB Strategies and Insights - February 2019

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/25/2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Whose Party Is This Anyway? PTAB Panel Refuses Joinder for Follow-On Petition

McDermott Will & Emery on 12/28/2018

In an institution decision addressing the scope of joinder under § 315(c), the Patent Trial and Appeal Board (PTAB) found that its power to grant joinder is limited to adding a party to the proceeding, and that it cannot add...more

Federal Circuit Avoids Addressing Joinder, Questions Expanded Panel Use

McDermott Will & Emery on 10/3/2017

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision finding claims invalid as obvious, but did not directly address the PTAB’s determination that joinder was...more

It’s Never Too Late to File an Inventorship Dispute

Nutter McClennen & Fish LLP on 4/26/2016

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger...more

Inter Partes Review Proceedings: A Third Anniversary Report

Perkins Coie on 9/18/2015

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

Collaborating Before The PTAB

Robins Kaplan LLP on 4/30/2015

One of the most important decisions that a patent defendant must make is whether to join with other co-defendants in America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board. Attorneys Seth Northrop and...more

Is The Deck Stacked Against Patent Owners In The PTAB?

Robins Kaplan LLP on 4/21/2015

Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

PTAB Panels Are Divided Regarding Interpretation Of The Joinder Provision

Troutman Pepper on 4/7/2015

The America Invents Act (AIA) allows a petitioner to request joinder of an inter partes review (IPR) of a patent with an IPR proceeding previously instituted with respect to that patent so long as the request for joinder is...more

The Futility of Petitioning Congress (After the Fix Is In): Stakeholders Tell Judiciary Committee What's Wrong with Goodlatte Bill...

McDonnell Boehnen Hulbert & Berghoff LLP on 11/22/2013

What everybody doesn't seem to know is how to get Congress to listen to the needs of the innovation community when well-heeled sectors put their lobbying and financial support in favor of legislation purportedly aimed at...more

The Joinder Provision of the AIA is Not a Substitute for Discretion

Foley & Lardner LLP on 10/24/2013

The Federal Circuit recently confirmed that district courts must still exercise discretion in deciding motions to sever where the heightened joinder requirements of the AIA are satisfied. In In re Nintendo, Co.¸ __...more

America Invents Act: Limitation on Joinder

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/3/2012

On September 16, 2011, the America Invents Act (AIA) ushered in major changes to the U.S. patent system, including changes affecting assertion of patent infringement against multiple, unrelated accused infringers. Effective...more

23 Results

View per page

Page: of 1

America Invents Act › Joinder

"My best business intelligence, in one easy email…"