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Trial Practice Guidance Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office

Jones Day

Two Many IPRs: Different References Insufficient for Parallel IPRs

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The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent.   Shenzhen Root Tech. Co.,...more

Fitch, Even, Tabin & Flannery LLP

[Webinar] Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice - July 27th, 9:00 am - 10:00 am PDT

Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum...more

Perkins Coie

Real Parties-in-interest: Guidance On Who Is An RPI —and Who Is Not—in Post-grant Proceedings

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In post-grant review proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, practitioners who omit any of the parties with an interest in the matter could face consequences as severe as...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #19 for Surviving an Instituted IPR: Sur-Reply Strategies

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

Jones Day

PTAB Holds Mock Oral Arguments for LEAP Attorneys

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Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more

Jones Day

PTO Proposes PTAB POPR Presumption Principle Permutation

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On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more

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

2019 PTAB Year in Review: Analysis & Trends: Consistency at the PTAB

The Patent Trial and Appeal Board (PTAB) implemented a number of measures designed to increase the consistency and predictability of panel decisions in the second half of 2018. These measures included the establishment of the...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

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

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

Wilson Sonsini Goodrich & Rosati

2019 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2019 PTAB Year in Review. We begin the 2019 PTAB Year in Review with a review of 2019 petition filings at the Patent Trial and Appeal Board (PTAB) and then take a...more

McDermott Will & Emery

PTAB Issues Updated Trial Practice Guide: Yearly Updates Expected

On November 20, 2019, the Patent Trial and Appeal Board (PTAB) issued updated guidance for trial procedures in inter partes review (IPR) and post grant review (PGR) proceedings at the US Patent and Trademark Office in the new...more

WilmerHale

Potential Changes to PTAB Practice on Multiple IPR Petitions

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An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more

Jones Day

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

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On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

Fish & Richardson

PTAB Publishes Update to AIA Trial Practice Guide

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On July 15, 2019, the USPTO published its second update to the AIA Trial Practice Guide (the “Trial Guide Update” or the “Guide”). The Trial Guide Update addresses a wide variety of topics ranging from the filing of a...more

Knobbe Martens

USPTO Publishes PTAB Trial Practice Guide Update

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On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

Jones Day

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

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The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the...more

Knobbe Martens

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then...

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Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more

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