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United States Patent and Trademark Office › Inter Partes Review (IPR) Proceeding › Discovery

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Jones Day

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

Jones Day on

USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...more

Irwin IP LLP

Fair Shot at Privity: Director Reverses PTAB on Discovery Ruling 

Irwin IP LLP on

Semiconductor Components Indus., LLC v. Greenthread LLC, IPR2023-01242, -01243, -01244 (USPTO Apr. 30, 2025) - The USPTO Director’s recent decision in Semiconductor Components v. Greenthread squarely addresses a recurring...more

Fish & Richardson

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

Fish & Richardson on

Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation...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

Mintz - Intellectual Property Viewpoints

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

Mintz - Intellectual Property Viewpoints on

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

McDonnell Boehnen Hulbert & Berghoff LLP

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

McDonnell Boehnen Hulbert & Berghoff LLP on

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more

Mintz - Intellectual Property Viewpoints

USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

Mintz - Intellectual Property Viewpoints on

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent...more

Knobbe Martens

Federal Circuit Review - August 2017

Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Schwabe, Williamson & Wyatt PC

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

Schwabe, Williamson & Wyatt PC on

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...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 - June 2016

Wilson Sonsini Goodrich & Rosati on

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

McDermott Will & Emery

Exclusive Ownership” Is Not Necessary for Standing in an IPR - Legend3D Inc. v. Prime Focus Creative Services Canada Inc.

McDermott Will & Emery on

Addressing the standing requirement for participating in an inter partes review (IPR), the U.S. Patent Trial and Appeal Board (PTAB or Board) held that, unlike district court, there is no “exclusive ownership” requirement for...more

Perkins Coie

Inter Partes Review Proceedings: A Third Anniversary Report

Perkins Coie on

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

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

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

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

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

Orrick, Herrington & Sutcliffe LLP

Congress Continues to Promote Patent Reform Efforts

Orrick, Herrington & Sutcliffe LLP on

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

McDermott Will & Emery

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

McDermott Will & Emery on

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

Orrick, Herrington & Sutcliffe LLP

USPTO Inter Partes Review Update: Scope of Discovery

Orrick, Herrington & Sutcliffe LLP on

In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC, Case No. IPR2012-00001 (PTAB March 5, 2013), the USPTO recently issued its first-ever substantive ruling on a motion for additional discovery in an Inter Partes review...more

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