Archives: Post-Grant Proceedings

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PTAB Procedural Reform Initiative: Will the PTAB Become More Patent-Friendly?

Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The announcement stated that the USPTO will use nearly five years of historical data and user experiences to improve PTAB trials. In … Continue Reading

Phigenix v. ImmunoGen: IPR Challenger May Lack Standing to Appeal to Federal Circuit

The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way. This issue was highlighted recently in a precedential … Continue Reading

Common Sense Is Not So Common-ly Obvious

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity … Continue Reading

Supreme Court Ruling on at Least Five Patent-Related Cases

To date, the Supreme Court has granted certiorari (commonly referred to as cert) to five patent-related cases this term, which will result in three oral arguments likely to be decided before the end of the term. Two of the cases were consolidated into a single argument, while another case was subject to a Grant-Vacate-and-Remand (GVR) … Continue Reading

PTAB Reaffirms High Bar for Patent Eligibility under Alice

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally … Continue Reading

II Ca-Be-lly or Not II Ca-Be-lly: Is The Famous Cabilly II Antibody Patent Near Extinction?

antibodiesOn February 5, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision to institute an Inter Partes Review (IPR) of Genentech’s “Cabilly II” patent (U.S. Patent No. 6,331,415). This triggered the one-month deadline for third parties to request joinder under 37 CFR § 42.122(b). Whether you are a licensee, or otherwise have a … Continue Reading

Recent PTAB Decision Informs Applicants and Petitioners about How Estoppel Issues Will Be Addressed

Recently, the Patent Trial and Appeal Board (“the Board”), issued an informative decision in Apotex Inc., v. Wyeth, LLC, IPR2015-00873 (“the ‘873 IPR”), providing insight into how the Board will apply estoppel under 35 U.S.C. §315(e)(1) and exercise its discretion under 35 U.S.C. §325(d). Previously, Apotex filed an IPR petition, IPR2014-00115 (“the ‘115 IPR”), against the … Continue Reading

USPTO Releases New Proposed Rules Governing Patent Review Proceedings

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents … Continue Reading

PTAB Issues Representative Decision on Scope of Estoppel in IPR Proceedings

The Patent Trial and Appeal Board (the Board) at the U.S. Patent and Trademark Office (USPTO) recently issued a decision interpreting the estoppel provisions of 35 U.S.C. §315(e)(1) in inter partes review (IPR) proceedings. See Dell Inc. v. Electronics and Telecommunications Research Institute, IPR2015-00549 (PTAB, Paper 10, March 26, 2015). The decision is one of only … Continue Reading

Federal Circuit Issues First Decision Regarding New Post-Grant Proceedings

On February 4, 2015, in In re Cuozzo Speed Technologies, LLC the Federal Circuit decided the first appeal from the Patent Trial and Appeal Board (PTAB) regarding an Inter Partes Review (IPR). Inter Partes Review is a United States Patent and Trademark Office (USPTO) proceeding created by the America Invents Act (AIA) meant to offer … Continue Reading

Available IPR Data Can Be Misleading

The Leahy-Smith America Invents Act provided for post issuance proceedings that allow the Patent Trial and Appeal Board (the PTAB) of the United States Patent and Trademark Office (USPTO) to review issued patents for validity. These proceedings have become a popular choice for defendants in patent litigation due to a lower standard for proving that a … Continue Reading

PTAB Weighs In on Subject Matter Eligibility of Software Medium Claims in Rare Precedential Opinion

The Patent Trial and Appeal Board (PTAB) at the USPTO recently issued a rare precedential opinion in Ex Parte Mewherter that addresses subject matter eligibility of computer program product claims under 35 U.S.C. § 101. The PTAB affirmed the examiner’s rejection of a claim that recited a “machine readable storage medium” as being directed to … Continue Reading

Tips for Avoiding Appeal in Ex Parte Patent Reexamination

Defendants in patent litigation suits often seek reexamination of the asserted patents in hopes that the United States Patent and Trademark Office (USPTO) will find the patents to be invalid, and therefore unenforceable. As a patent owner seeking to assert a patent, it is often critical that the patent proceed through reexamination unscathed and that … Continue Reading

After the AIA – Strategies for Expediting Patent Filings

While the America Invents Act (AIA) brought many significant changes to the U.S. patent laws, there is arguably no more impactful change than the shift from a “first to invent” system to a “first inventor to file” system that occurred on March 16, 2013. This shift has significant effects on patent applications having an effective … Continue Reading

Cost Analysis of Post-Grant Review Proceedings Versus European Opposition Proceedings

A previous edition of Nutter’s IP Bulletin included an article analyzing U.S. post-grant review proceedings established by the Leahy-Smith America Invents Act (AIA) in view of European opposition proceedings. As a follow up, our readers may be interested in a cost comparison of the AIA’s post-grant review and European opposition proceedings recently presented by Director David … Continue Reading

Analyzing Post-Grant Review Proceedings in View of European Opposition Proceedings

An important change to the United States patent system in the Leahy-Smith America Invents Act (AIA) is the introduction of post-grant review (PGR) proceedings that allows third parties the opportunity to request review of any newly issued or reissued U.S. patent based on a broad range of reasons. The laws enacting post allowance proceedings are … Continue Reading

US Patent Law Reform Act Is On Its Way to the White House

Competing patent reform bills were passed by the Senate and House of Representatives earlier this year. Yesterday, the Senate took the unusual step of bypassing reconciliation and instead adopted the House bill without changes, paving the way for President Obama’s anticipated signature on the “Leahy-Smith America Invents Act” (“AIA”). The Act provides the most comprehensive … Continue Reading
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