News & Analysis as of

Post-Grant Review Inter Partes Review (IPR) Proceeding Litigation Strategies

Wolf, Greenfield & Sacks, P.C.

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...more

Troutman Pepper

Reissue in IPR and PGR Practice – Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for our podcast series, which focuses on strategies, trends, and other happenings in post-grant proceedings. In this second installment...more

American Conference Institute (ACI)

[Virtual Conference] PTAB Practice Briefing - December 2nd, 10:00 am - 6:00 pm EST

Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more

Womble Bond Dickinson

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on

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

White & Case LLP

CBM Review – Last Call

White & Case LLP on

Covered Business Method (“CBM”) review ends in mid-September, and you have one last chance to take advantage. In 2011, the AIA introduced three new administrative review proceedings of patentability with the goal of...more

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

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more

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

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

Jones Day

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

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

Jones Day

Design Patents at the PTAB?

Jones Day on

In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more

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