News & Analysis as of

America Invents Act › Post-Grant Review › Patent Invalidity

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... more +
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 -
Farella Braun + Martel LLP

What Patent Bills Would Mean for Infringement Litigation

Farella Braun + Martel LLP on

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

PGR Estoppel Continues to be Broad and Onerous

Jones Day on

An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Jones Day

Use Caution When Mapping Multi-Forum Patentability Attack

Jones Day on

A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more

Jones Day

PGRs Still Rare – Is Estoppel The Reason?

Jones Day on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

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

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Takes Pass on Considering IPR Constitutionality

McDonnell Boehnen Hulbert & Berghoff LLP on

There is little rhyme nor reason in the cases the Supreme Court decides to review. But the Court has patterns in its case selection that do (to some degree) probe what the Justices think are important questions. One pattern...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sanofi Mature IP v. Mylan Laboratories Ltd. (Fed. Cir. 2019)

McDonnell Boehnen Hulbert & Berghoff LLP on

One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of...more

Jackson Walker

Are Patents Property?

Jackson Walker on

Most people think of “intellectual property” as a type of property. This makes sense because, well, “property” is in the name. However, as lawyers know all too well, the law is never that simple. As it turns out, at least one...more

Bradley Arant Boult Cummings LLP

Changes to PTAB’s Claim Construction Standard - Intellectual Property News

Bradley Arant Boult Cummings LLP on

On October 10, 2018, the United States Patent and Trademark Office (USPTO) announced that it will issue a final rule changing the claim construction standard for interpreting claims in inter partes review (IPR), post-grant...more

Snell & Wilmer

Supreme Court Confirms Inter Partes Review Is Constitutional

Snell & Wilmer on

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et...more

Dickinson Wright

Will Inter Partes Reviews Be Abolished By The Supreme Court?

Dickinson Wright on

On November 27, 2017, the Supreme Court heard oral arguments in a case that could undermine a key provision in the America Invents Act. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (Oils States). The issue...more

McDonnell Boehnen Hulbert & Berghoff LLP

Is a Patent a Private or Public Right? -- Supreme Court Hears Oral Arguments in Oil States Energy Services, LLC. v. Greene's...

McDonnell Boehnen Hulbert & Berghoff LLP on

Leading up to the Supreme Court oral argument for Oil States Energy Services, LLC. v. Greene's Energy Group, LLC on November 27, 2017, there was a lot of discussion regarding whether patents were a private or public right. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

A Deep Dive in Petition Filing Stats

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

For the first time in more than two years, we observed an eye-catching quarter-to-quarter dip in the number of new patents challenged at the PTAB. Slightly more than 200 patents were hit with their first PTAB petition between...more

McDonnell Boehnen Hulbert & Berghoff LLP

Oil States Energy Services, LLC v. Greene's Energy Group, LLC -- Positions Taken in Selected Amicus Curiae Briefs

McDonnell Boehnen Hulbert & Berghoff LLP on

On November 27, 2017, the Supreme Court considered the question of whether the inter partes review process established by the U.S. Patent and Trademark Office in implementing portions of the Leahy-Smith America Invents Act or...more

Kilpatrick

Is the Pendulum About to Swing Back?

Kilpatrick on

In 2012, the American Invents Act created Inter Partes review (“IPR”) and related proceedings that allowed parties to request that the Patent Office institute a trial to determine the patentability of issued claims. Over the...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

Mintz - Intellectual Property Viewpoints on

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more

Mintz - Intellectual Property Viewpoints

Supreme Court to Decide the Constitutionality of Inter Partes Review

Mintz - Intellectual Property Viewpoints on

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more

Snell & Wilmer

Supreme Court to Consider Constitutionality of AIA Inter Partes Review Proceedings

Snell & Wilmer on

The Supreme Court has granted a writ of certiorari challenging the constitutionality of inter partes review proceedings conducted by the United States Patent and Trademark Office under the America Invents Act. The Court’s...more

Knobbe Martens

Supreme Court Will Decide Whether IPRs Are Unconstitutional

Knobbe Martens on

The Supreme Court granted a petition for writ of certiorari to address whether inter partes review – an adversarial process used by the Patent Office to determine the validity of existing patents – is unconstitutional in Oil...more

Orrick, Herrington & Sutcliffe LLP

High Court to Address Constitutionality of Inter Partes Reviews

Orrick, Herrington & Sutcliffe LLP on

On June 12, 2017, the U.S. Supreme Court in Oil States Energy Services v. Greene’s Energy Group, No. 16-712 (U.S. June 12, 2017) granted certiorari to decide next term if certain American Invents Act (AIA) review proceedings,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Supreme Court to Review the Constitutionality of AIA Patent Review Proceedings

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

Yesterday, the Supreme Court granted certiorari in a case that may have profound implications for U.S. patent law by abolishing inter partes reviews at the U.S. Patent & Trademark Office (USPTO). In Oil States Energy...more

Morgan Lewis

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

37 Results
 / 
View per page
Page: of 2
Next »

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

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up Log in
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide