News & Analysis as of

Discovery Post-Grant Review

Jones Day

PTAB Reiterates Requirements for Additional Discovery

Jones Day on

The PTAB in a recent PGR proceeding: SWM International, LLC et al v. DynaEnergetics Europe GmbH (PGR2021-00097), reiterated the requirements for additional discovery. In particular, in this matter, the petitioner, having...more

Goodwin

Issue 34: 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

Goodwin

Issue Eighteen: 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

Jones Day

Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

Jones Day on

Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction....more

WilmerHale

Real Parties-in-Interest Discovery In Post-Grant Proceedings

WilmerHale on

The America Invents Act of 2011 requires petitioners in post-grant proceedings—including in all inter partes reviews (IPRs) and covered business method (CBM) reviews—to identify each ‘‘real party-in-interest’’ (i.e., ‘‘the...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

Wilson Sonsini Goodrich & Rosati

The PTAB Review - November 2016

New Testimonial Evidence with Preliminary Responses: Panacea or Placebo? Just over three years ago, during a keynote speech at the AIPLA annual meeting, the Patent Trial and Appeal Board (PTAB) was criticized as a...more

McDermott Will & Emery

PTAB Provides Procedural Guidance, Designates Five Opinions as Precedential

On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business...more

Wilson Sonsini Goodrich & Rosati

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

King & Spalding

Intellectual Property Newsletter - November/December 2015

King & Spalding on

The State of Patent Law: The Interplay of Recent, Pending, and Proposed Changes - Recent developments in the field of patent law have given weight to the old adage that the only thing that is constant is change. Enacted...more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

Bracewell LLP

Know Them Before They are Famous (or at least final): The Latest USPTO Proposed Rule Changes

Bracewell LLP on

On August 19, 2015, the United States Patent and Trademark Office (USPTO) released proposed rule changes for trials before the Patent Trial and Appeal Board (PTAB). The proposed rule changes were made in response to input...more

Knobbe Martens

Catalog Search Posted On Claim Preclusion Does Not Bar Additional Discovery Relating to Privity Challenge in Later-Filed IPR...

Knobbe Martens on

The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion. Informative opinions are not binding; they rather provide guidance on rules and...more

King & Spalding

Patent Pending: The Outlook for Patent Legislation in the 114th Congress

King & Spalding on

The field of patent law is in a state of flux. Just four years after the America Invents Act (“AIA”) went into effect, Congress is taking up the issue once again, this time seeking to pass legislation to curb abusive patent...more

Orrick, Herrington & Sutcliffe LLP

Congress Continues to Promote Patent Reform Efforts

In recent years, Congress has devoted a great deal of attention to patent reform. Those efforts led in 2011 to passage of the Leahy-Smith America Invents Act (AIA), which was the most extensive revision of the patent laws in...more

Mintz - Intellectual Property Viewpoints

PTAB Issues ‘Quick Fix’ Rule Package, Effective Immediately

On March 31 we posted (here) about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring. This past Tuesday, May 19, 2015,...more

Knobbe Martens

PTAB Grants Additional Discovery in Covered Business Method

Knobbe Martens on

The AIA provides an opportunity for limited discovery in the new Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Methods (CBM) proceedings. The USPTO has set a “good cause” standard for additional...more

McDermott Will & Emery

Six-Month Report Card: Post-Issuance Proceedings Under the AIA

Introduction - On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties...more

18 Results
 / 
View per page
Page: of 1

"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:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide