Tag Archives: PGR

USPTO to Host AIA Second Anniversary Forum on Sept. 16

The USPTO will host an AIA Second Anniversary Forum on September 16, 2013, at the USPTO’s Alexandria campus in the Madison Auditorium from 1 to 5 pm, and also via webcast.  Here is the USPTO announcement: At the Forum, USPTO … Continue reading

Posted in America Invents Act, covered business methods, Ex Parte Prosecution, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | 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

SAP Joins PTO against Versata in Eastern District of Virginia

You may recall that Versata sued the Patent Office in the Eastern District of Virginia to challenge the PTAB’s decision to institute a CBM review of Versata’s U.S. 6,553,350 patent.  Versata Development Group, Inc. v. Rea, 1:13-cv-00328-GBL-IDD (E.D. VA).  It turns out … Continue reading

Posted in America Invents Act, covered business methods, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA | Tagged , , , , , , , , , , , , , | Leave a comment

Joinder in Patent Office Proceedings Clarified by PTAB

Several posts ago we explored how the Board perceived joinder of a subsequent petition filed by a petitioner to an ongoing proceeding.  A recent ruling by the Patent Trial and Appeal Board (PTAB) clarifies how the Board views joinder of … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Leave a comment

AIA Post-Grant Practice Rapidly Integrates Federal Circuit and Board Decisions

AIA post-grant practice has many advantages over other proceedings, but one of the great benefits of AIA post-grant practice that we have not discussed is the speed in which AIA post-grant proceedings adopt recent patent decisions from different sources.  This … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, estoppel, Ex Parte Prosecution, Litigation, Patent Reform, patent-eligible subject matter, petitions practice, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , | 2 Comments

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

SAP Files Ex Parte Reexamination Request using Prior Art from Ongoing Litigations

As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act.  To advance its PTAB … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, Post Grant Review, prior art, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch | Tagged , , , , , , , , , , , , , , , , , , , , | Leave a comment

Petitions to PTAB at Three Months into AIA Post-Grant Patent Trials

This blog post is at three months past September 16, 2012, the date upon which the PTAB began accepting petitions for inter partes review and covered business method patent review under the America Invents Act.  Considering that there are about 15 CBM … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials, Uncategorized | Tagged , , , , , , , , , , | Leave a 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

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