Tag Archives: patent reform

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

Federal Circuit Reinforces PTAB’s Authority to Institute Trial on Selected Claims in Synopsis v. Mentor Graphics Appeal

Newcomers to post-grant proceedings are often surprised by the PTAB’s claim-by-claim approach to patent challenges under the America Invents Act.  When reporting statistics about IPRs, commentators tend to ignore these considerations: First, an IPR petition can be drafted to challenge all or some … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, clear and convincing evidence, doctrine of claim differentiation, Uncategorized | 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

Are Your Patent Procurement Guidelines Outdated?

  I saw a bumper sticker that said:  “Change is inevitable, but growth is optional.”  This is true in many facets of life, and it is true for patent practice.  The changes of the past few years are numerous and … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, Litigation, Post Grant Review, PTAB Patent Trials | 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

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

Lex Machina’s 2013 Patent Litigation Report Shows Disparity Between Litigated Patents and those under PTAB Review

Litigation and post-grant proceedings often go hand-in-hand. A new litigation report published by Lex Machina summarizes patent litigation data for 2013 and prior years.  It is an interesting report and very easy to digest.  Two findings caught my eye.  The first one … Continue reading

Posted in America Invents Act, covered business methods, Future of PTAB Trial Practice, inter partes review, Joinder Post AIA, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , | Leave a comment

Federal Circuit Dismisses Appeals by Petitioners Who Were Denied Inter Partes Reviews

The Federal Circuit issued two orders on April 24, 2014 dismissing appeals by petitioners in proceedings where the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR).  Each appeal is summarized as follows: St. Jude Medical, … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, claim challenges, Federal Circuit, inter partes review, Litigation, Mandamus Actions in the Federal Circuit, Patent Reform, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , | Leave a comment

Board Proposes Solution for Petitioner if Expert Witness Not Available for Deposition in Patent Office Trial

In current post-grant practice, most petitions are accompanied by an expert declaration to support the assertions made by the petitioner.  If the petitioner successfully obtains institution of a patent office trial (inter partes review, covered business method patent review, or … Continue reading

Posted in covered business methods, Expert Witnesses, inter partes review, Post Grant Review, PTAB, Uncategorized | Tagged , , , , , , , , , , , , , , , , , , , | Leave a comment

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