News & Analysis as of

Post-Grant Review

Absolute Intervening Rights: A Silver Lining to Thwarted Post-Grant Challenges

by Jackson Walker on

When faced with allegations of patent infringement, many defendants elect to challenge the validity of certain issued patents using the various post-grant proceedings available with the United States Patent & Trademark Office...more

Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers

by Jones Day on

The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions)...more

PTAB Institutes Its First Derivation Trial: Andersen Corp. v. GED Integrated Solutions, Inc.

Under the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. Petitioners have filed...more

Statutory Estoppel Only Applies To The Same Patent Claims

by Jones Day on

While claims among patents in the same family can be very similar, such similarities are not enough for the statutory estoppel provision of 35 U.S.C. §325(e)(1) to apply. In Telebrands Corp. v. Tinnus Enterprises, LLC, the...more

Patent Legislation Update: New Version of the STRONGER Patents Act, and Proposed Abrogation of Sovereign Immunity

by Ropes & Gray LLP on

Last June, Senator Chris Coons (D-DE) and several co-sponsors introduced the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017, a pro-patent owner bill that would...more

[Webinar] Strategies for IP Prosecution and Enforcement in Europe and the United States Webinar Series: Post-Grant Amendments -...

In today’s global marketplace, the launch of new products and commercial services can present a wide range of issues for companies, particularly when considering the risk of infringing the patent rights of others. Obtaining a...more

Stop What You Are Doing: Collateral Estoppel At The PTAB

by Jones Day on

On March 13, 2018, in Nestlé USA, Inc. v. Steuben Foods, Inc., 2017-1193 (Fed. Cir. Mar. 13, 2018), the Federal Circuit confirmed that collateral estoppel may preclude the need to revisit an issue that had already been...more

PTAB: Tribal Sovereign Immunity Does Not Provide a Basis to Terminate IPRs

by Hogan Lovells on

On February 23, 2018, in a much-anticipated decision, the PTAB ruled that tribal sovereign immunity could not be used to shield certain Allergan Inc. (“Allergan”) patents from review in a number of IPRs. Allergan had assigned...more

Allergan’s Mohawk Gambit Fails At The PTAB

by Pepper Hamilton LLP on

The Patent Trial and Appeal Board (PTAB) has not taken kindly to a move by the Irish drug company Allergan to shield its key patents on its dry-eye drug Restasis from challenge at the U.S. Patent Office by assigning these...more

Exclusion of Evidence at the PTAB - Does it ever happen?

Experienced PTAB practitioners know that the Board rarely grants motions to exclude evidence in Post Grant proceedings. In this article, we look beyond the grim anecdotes and provide some statistics, as well as the Board’s...more

Be Advised: Settlement Does Not Necessarily End An IPR Or PGR

by Jones Day on

The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent...more

Design Patent pto litigation statistics (through JANUARY 15, 2018)

The statistics below reveal the current trends on proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation. No new design patent petitions have been filed since April 2017, and only one Board...more

2017 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2017 PTAB Year in Review. We begin our report with a review of 2017 petition filings at the Patent Trial and Appeal Board (PTAB), which continues to be one of the...more

Fish & Richardson’s Post-Grant Report 2017

by Fish & Richardson on

The PTAB remains the forum of choice for challenging the validity of patent claims, surpassing the Eastern District of Texas as the #1 venue for patent disputes. 2017 also marked the fifth anniversary of the America Invents...more

PTAB Statistics for Calendar Year 2017

by Jones Day on

The PTAB has posted the AIA Trial Statistics through the end of calendar year 2017. The statistics are available for download at the PTO website....more

At The Bench: Patent Law 2017 Takeaways

Viability of Diagnostic Method Claims - Problem: It has become increasingly difficult to fend off validity challenges when asserting diagnostic method claims. Claims directed to methods of determining risk or disease...more

Global IP outlook 2018

by Hogan Lovells on

2017 was a year of widespread political, technological, and legal changes; leading to lack of certainty and creating both challenges and opportunities for businesses in 2018 and beyond. Please see full Publication below...more

Top Four Stories of 2017

After reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories. For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe...more

Federal Circuit Rules That PTAB Rejection Of IPR Time-Bar Defense Is Reviewable

by Brooks Kushman P.C. on

In an en banc decision, the U.S. Court of Appeals for the Federal Circuit ruled that the appeals court may review the Patent Trial and Appeal Board’s determination, in connection with a decision to institute inter partes...more

Patent Owners’ Use of Unexpected Results Before IPR Institution

Patent owners in the life sciences and chemistry areas must frequently decide whether to submit evidence of unexpected results as part of their preliminary responses in inter partes review (IPR) or other post-grant...more

PTAB Increasing AIA Trial Fees in January

by Finnegan – AIA Blog on

On January 16, 2018, the USPTO will increase its fees for inter partes reviews (IPR), post-grant reviews (PGR), and covered business method reviews (CBM). The base cost for an IPR increases from $23,000 to $30,500. ...more

Broadening Your Issued Patent - A Chance to Fix the Past

by Workman Nydegger on

Patent owners considering enforcement frequently wonder what they can do to strengthen their patent, more commonly to add claims that better cover known infringers, but also whether to correct errors in spelling and syntax. ...more

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

Word Games At The PTAB

by Jones Day on

In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words. The USPTO...more

Will Inter Partes Reviews Be Abolished By The Supreme Court?

by 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

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