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Patent Reform Inter Partes Review (IPR) Proceeding Patent Litigation

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

BCLP on

On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congressional Republicans Propose to Abolish America Invents Act (and a Bit More)

It being the holiday season in America, it is perhaps appropriate that patent traditionalists get something more than coal in their stocking from Representatives Massie (R-KY), Gohmert (R-TX), Gosar (R-AZ), and McClintock...more

Jones Day

New PTAB Pilot Program for Claim Amendments

Jones Day on

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

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

King & Spalding

Outlook for Patent Reform in 2016

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With the final session of the 114th Congress under way, the likelihood of Congress taking up and passing comprehensive patent litigation reform legislation becomes more and more remote. From a timing standpoint alone, the...more

Morrison & Foerster LLP

A Win for Kyle Bass’s Hedge Fund as the PTAB Dismisses Celgene’s Sanctions Motions

The Patent Trial and Appeals Board (PTAB) dismissed Celgene Corporation’s (“Celgene”) motions for sanctions against the Coalition for Affordable Drugs (“the Coalition”). As we previously reported, the Coalition is an...more

King & Spalding

Intellectual Property Newsletter - September/October 2015

King & Spalding on

PTAB Update on Inter Partes Review - On August 19, 2015, the Director of the USPTO released a blog post reporting on the state of post-grant review proceedings created by the Leahy-Smith America Invents Act of 2011 and...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Sea Change for IPRs? Late-Breaking Section 11 Regarding IPRs Part of the PATENT Act Approved by Senate Judiciary Committee

As reported here last week, the Senate Judiciary Committee passed the PATENT Act bill, with a Managers Amendment that includes several IPR-specific provisions. With this Amendment, the PATENT Act now has two major...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - February 2015 #2

FEDERAL CIRCUIT CASES - Federal Circuit Declines to Extend Patent Exhaustion Doctrine - In a February 10, 2015 decision, the Federal Circuit reversed a grant of summary judgment of non-infringement under the...more

Mintz - Trademark & Copyright Viewpoints

Inter Partes Review Initial Filings of Paramount Importance: What Is Clear After Two Years of Inter Partes Review Under the AIA

September 16, 2014, marked the two year anniversary since certain provisions of the Leahy-Smith America Invents Act went into effect, including post-grant Inter Partes Review (IPR) proceedings before the Patent Trial and...more

Robins Kaplan LLP

Interpartes Review: Is it Right for You?

Robins Kaplan LLP on

The America Invents Act (AIA) created a number of changes in how we obtain and enforce patents. But perhaps more substantially it changed the way that individuals can challenge the validity of patents. The AIA created a...more

Orrick, Herrington & Sutcliffe LLP

New IPR Ruling Further Clarifies Burden on Patentees to Amend Claims

The Patent Trial and Appeal Board (PTAB) issued its second Final Written Decision in a contested case under the AIA's inter partes review process on January 7, 2014. As with the PTAB's first decision, the petitioner...more

Foley & Lardner LLP

WARF Could Avoid Federal Circuit Review

Foley & Lardner LLP on

On November 25, 2013, Consumer Watchdog (“CW”) and Wisconsin Alumni Research Foundation (“WARF”) responded to the Federal Circuit’s Order directing each party to brief whether CW, as a third party requester, has standing to...more

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

One Year Later: Observations From The First Year Of Contested Proceedings At The USPTO

The America Invents Act - September 16, 2013 marks the one-year anniversary of the implementation of the America Invents Act, and with it, Covered Business Method (CBM) and Inter Partes Review (IPR) proceedings. To...more

Knobbe Martens

Three New Tools to Challenge Patents

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Among the most significant changes made by the America Invents Act (AIA) are the provisions that permit a business to challenge a patent at the U.S. Patent and Trademark Office in litigation-type proceedings, but at a lower...more

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