Category Archives: motion practice

Patent Office Board Takes a Bite out of Apple’s IPR Challenge of VirnetX Patents

In  mid-2013 Apple filed seven inter partes review petitions to challenge four VirnetX patents.  Recently, the Patent Trial and Appeal Board (the Board) denied all seven inter partes review (IPR) petitions.  This outcome demonstrates the Board’s current interpretation of the one-year bar … Continue reading

Posted in America Invents Act, claim challenges, inter partes review, Joinder of AIA Proceedings, Joinder of Parties Post-petition, motion practice, PTAB, rehearing request, Termination of Post-Grant Proceedings | Tagged , , , , , , , | Leave a comment

PTAB Provides More Guidance on Discovery

On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery.  (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in … Continue reading

Posted in Depositions, Expert, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, motion practice, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

Prosecution Bars and PTAB Practice

In an earlier post we explored many ways that reexamination differs from post-grant review, inter partes review, and covered business method review. The PTAB has been very clear that reexamination and AIA patent trials are very different.  For example, in … Continue reading

Posted in covered business methods, inter partes review, Litigation, motion practice, Post Grant Review, Prosecution Bar, Protective Order, PTAB, PTAB Patent Trials, reexamination generally | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

PTAB IPR Petition Joinder Practice Gains Momentum

Suppose a patent owner files suit and the defendant wants to file an AIA post-grant proceeding to challenge the validity of the patent.  Suppose further that the post-grant challenge is an inter partes review (IPR) filed by the defendant within … Continue reading

Posted in America Invents Act, Joinder of AIA Proceedings, motion practice, Patent Reform, PTAB, Uncategorized | Tagged , , , , , , , , , , , , , | 3 Comments

AIA Patent Trials Differ from Reexamination

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review … Continue reading

Posted in America Invents Act, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, pro hac vice admission, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , , , , , , , , , , | 1 Comment

PTAB Provides Convenient Access to Instructive Orders, Notices, and Decisions

The Patent Trial and Appeals Board has provided a web page that compiles instructive orders, notices, and decisions.  This is a handy reference site for practitioners to learn from decisions made in various covered business method (CBM), inter partes reviews … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , | Comments Off on PTAB Provides Convenient Access to Instructive Orders, Notices, and Decisions

Patent Trial and Appeal Board (PTAB) Guidance on Pro Hac Vice Admissions

The PTAB (“Board”) has already decided some motions for pro hac vice admission in various PTAB case proceedings.  A recent decision in case IPR2012-00035 referenced an earlier decision on motion for pro hac vice admission in case IPR2013-00010.  The relevant part … Continue reading

Posted in America Invents Act, motion practice, pro hac vice admission, PTAB | Tagged , , , , , , , , , , , | Leave a comment

Pro Hac Vice Admission Denied in SAP v. Versata CBM Patent Review

My prior post described the pro hac vice admission dispute between SAP and Versata Development Group in PTAB matter CBM2012-00001.  The PTAB wasted no time and issued an order denying the motion for pro hac vice admission of Versata’s litigation … Continue reading

Posted in America Invents Act, covered business methods, motion practice, Post Grant Review, pro hac vice admission, PRPS Patent Review Processing System, PTAB | Tagged , , , , , , , , , , | Leave a comment

Patent Challenger Seeks PTAB Jurisdiction over “Involved” Pending Applications

The AIA provides new post-issuance proceedings to challenge issued patents.  But can these challenges be used to stop related pending patent prosecution dead in its tracks?  One recent inter partes review petition requests just that and time will tell whether … Continue reading

Posted in America Invents Act, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, PTAB | Tagged , , , , , , , , , , , , , , , | Leave a comment

Steady Stream of AIA Post-Issuance Review Petitions Filed in PTAB

It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB. Look at it this … Continue reading

Posted in America Invents Act, covered business methods, estoppel, estoppel from administrative proceeding, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , | Leave a comment