Category Archives: PTAB

New PTAB Trial Practice Rules Effective May 2, 2016

On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.  A small correction to these Amendments was published on April 27.  I presented a summary of these … Continue reading

Posted in Amended Rulemaking, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , | Leave a comment

Patent Trends to Watch in 2016

2016 is starting off with a bang!  A number of interesting new developments have occurred as we enter into this new year: The Supreme Court will review broadest reasonable interpretation (BRI), courtesy of the petition for cert in Cuozzo The Federal Circuit … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation, Broadest Reasonable Interpretation standard, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, Supreme Court Review of post-grant issues | Tagged , , , , , , , , , , , , , , , | Leave a comment

Board Limits Multiple IPR Challenges in Samsung Electronics v. Rembrandt Wireless Technologies

June 22, 2015 Rembrandt Wireless Technologies sued Samsung and Research in Motion for infringement of  U.S. Patent 8,457,228 in June 2013.  The ‘228 patent relates to data communications, and in particular to a data communication system in which a plurality of modems … Continue reading

Posted in America Invents Act, claim challenges, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder Post AIA, petitions practice, prior art | Tagged , , , , , , , , | Leave a comment

Federal Circuit Interprets Board’s Broadest Reasonable Interpretation Standard – Part II

In Microsoft Corp. v. ProxyConn, Inc. v. Michelle K. Lee, Intervenor (Fed. Cir. cases 2014-1542 and -1543), the Federal Circuit reversed claim constructions made by the Board in the underlying IPRs.  One of the claim constructions that was reversed related … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Federal Circuit, inter partes review, prior art, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , | Leave a comment

Federal Circuit Interprets Board’s Broadest Reasonable Interpretation Standard – Part I

We know from the Federal Circuit’s decision in In re Cuozzo Speed Technologies, that the broadest reasonable interpretation (BRI) standard applies in IPRs, but in a recent appeal decision, the Federal Circuit has announced limits to the application of BRI. Microsoft had … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, clear and convincing evidence, Federal Circuit, inter partes review, PTAB | Tagged , , , | Leave a comment

New PTAB Rule Changes Published Yesterday

A small number of rule changes were published yesterday which affect all involved in post-grant trials at the USPTO.  The fixes make the rules more specific and make for more uniform proceedings.  They are effective May 19, 2015.  A copy of … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, Patent Reform, PTAB, PTAB Patent Trials | Tagged , | Leave a comment

Unified Patents’ Institution Decision Gives Insight to PTAB’s Real Party in Interest Analysis

Those watching decisions from the Patent Trial and Appeal Board (PTAB or Board) have observed a trend where a patent owner challenges an IPR petition based on alleged defects in the petition’s identification of real parties in interest (RPI) to the … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, Correction of Petition After Bar, estoppel, inter partes review, PTAB | Tagged , , , , , , , , , , , , , , | Leave a comment

Target Wins Rehearing of IPR Joinder Decision with Expanded Panel

Last fall, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to require joinder requests by a non-party to an ongoing proceeding.  (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.)  Prior to that decision,  the Board … Continue reading

Posted in America Invents Act, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Joinder Post AIA, Mandamus Actions in the Federal Circuit, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , | Leave a comment

The Settlement Effect of PTAB Proceedings and Recent Patent Office Trial Statistics

December 29, 2014 The Patent Trial and Appeal Board (PTAB) released statistics for AIA Patent Office trials as of Dec. 18, 2014.  Different commentators have recently reported that the institution rate for these proceedings has dropped to about 60-70 percent, depending … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, inter partes review, Litigation, petitions practice, Post Grant Review, PTAB, PTAB Patent Trials, Settlements in Post-Grant Proceedings, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , | 1 Comment

Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel

October 17, 2014 Last month, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude joinder requests by an existing party to an ongoing proceeding.  (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Litigation, Patent Reform, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , | Leave a comment