Tag Archives: Post Grant Review

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

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

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

See You at the AIPLA 2014 Spring Meeting!

I am presenting at the AIPLA Spring Meeting on May 15, 2014 in Philadelphia and hope to see you there.  My task is to provide strategies for filing inter partes reviews, covered business method reviews and post-grant reviews.  I hope … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review | Tagged , , , , , , , , , , , | Leave a comment

Join Me in San Francisco for PLI’s Post-Grant CLE Program on April 28

I will be presenting at PLI’s “USPTO Post-Grant Patent Trials 2014” CLE Program on April 28th with a number of other post-grant practitioners. Please join us there or attend via webinar! — Timothy Bianchi

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Comments Off on Join Me in San Francisco for PLI’s Post-Grant CLE Program on April 28

USPTO Statistics Show Inter Partes Patent Reviews are Frequently Settled Before Final Board Decision

The U.S. Patent Office regularly posts statistics on post-grant proceedings such as inter partes review and covered business method patent review.   An excerpt of PTAB statistics for February 13, 2014 is found below.  The acronyms “FWD” and “RAJ” stand … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, Termination of Post-Grant Proceedings, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

A petition for covered business method review, inter partes review, or post-grant review may  be filed on behalf of of several different parties and real parties in interest.  Typically, such filings involve one, two, or three named persons (e.g., companies) … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Comments Off on Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

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