News & Analysis as of September 23, 2024

America Invents Act › Patent Owner Preliminary Response

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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 -

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on 12/14/2020

The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed...more

BREAKING: PTAB Publishes Final Rule Package

Jones Day on 12/9/2020

On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more

PTAB Strategies and Insights - September 2019: Gaps in an AIA Petition Cannot be Fixed Belatedly During Trial

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 10/4/2019

Experienced PTAB practitioners know that, in an IPR, assuming each claim element is in the asserted prior art, the rubber meets the road on the reason-to-combine arguments. In Henny Penny Corp. v. Frymaster, LLC, the Federal...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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/30/2019

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...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

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on 7/19/2019

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/18/2019

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

PTAB Strategies and Insights - November 2018: Timing is Everything for Discretionary Denial

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/5/2018

A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial....more

New PTAB Pilot Program for Claim Amendments

Jones Day on 11/5/2018

The USPTO has proposed a pilot program intended to make it easier to amend claims before the PTAB. (See the USPTO’s Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings under the America...more

Singing the Same Claim Construction Tune: USPTO Adopts Federal Court Claim Construction Standard for AIA Proceedings

Bracewell LLP on 10/19/2018

On October 11, 2018, the United States Patent and Trademark Office (USPTO) published notice of a final rule change adopting the claim construction standard applied by federal courts for use by the Patent Trial and Board...more

PTAB Strategies and Insights - August 2018: Petitioners Must Have Premonition to Win

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 8/24/2018

Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more

Getting The Last Word: Requesting a Patent Owner Sur-Reply in AIA-PTAB Proceedings

Foley & Lardner LLP on 7/27/2018

Practitioners are familiar with the typical submission process in America Invents Act (“AIA”) – Patent Trial and Appeals Board (“PTAB”) proceedings. First, the Petition is filed, and then the Patent Owner may submit a Patent...more

PTAB Strategies and Insights - June 2018: PTAB AIA Proceeding Deposition Strategy

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/18/2018

Depositions are an important, yet sometimes overlooked, part of AIA proceedings, such as inter partes review (“IPR”) trial proceedings. It is important to understand that IPR depositions differ in significant ways – both in...more

PTAB Designates Western Digital as Informative of Motions to Amend

Jones Day on 6/4/2018

On June 1, 2018, the PTAB announced new guidance on motions to amend in AIA trials. In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290...more

SAS Institute: One Month In

Foley & Lardner LLP on 6/4/2018

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

SAS Institute: Two Weeks In

Foley & Lardner LLP on 5/10/2018

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

Knobbe Martens on 5/4/2018

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

Federal Circuit: Pre-IPR Institution Disclaimer of Claims Insufficient to Avoid Adverse Judgment

Foley & Lardner LLP on 2/20/2018

At this point, several cases have examined the appealability of the Board’s institution decisions in inter partes review (“IPR”) proceedings. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2015) (holding...more

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

Foley & Lardner LLP on 6/1/2016

Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

Patent Office Issues Final Rule Amending the Rules of Practice for Trials at the PTAB

Bryan Cave Leighton Paisner on 4/25/2016

The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May...more

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

WilmerHale on 4/18/2016

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

New Rules for Patent Office Litigation: Will They Make Patent Owners Happy?

McCarter & English, LLP on 4/7/2016

On April 1, the U.S. Patent and Trademark Office (USPTO) published new rules for the increasingly popular America Invents Act (AIA) proceedings, such as inter partes reviews, covered business method reviews, and post-grant...more

The New AIA Rules May Help Patent Owners Avoid Trial

Foley & Lardner LLP on 4/6/2016

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more

PTO Issues New Final Rules for PTAB Proceedings

Latham & Watkins LLP on 4/6/2016

New rules give more options to patent owners and petitioners in pre-institution phase. On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more

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America Invents Act › Patent Owner Preliminary Response

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