LexisNexis® Legal Newsroom
Common Patentee Missteps in Inter Partes Review

Preliminary Responses: Just Because You Can Doesn't Mean You Should The new post grant patentability challenges of the America Invents Act (AIA) have been warmly embraced by the public as a cost effective patent dispute resolution tool . Patent challengers have quickly leveraged these new...

Generic Pharma Leverages PTAB

IPRs and Drug Litigation Since Post Grant Review (PGR) is designed to challenge patents on 112 and 101 grounds not available in Inter Partes Review (IPR), it is often assumed that Bio/Pharma is somewhat unconcerned with the growing trend to challenge patents in IPR at the PTAB . Today, my partner...

Speed of PTAB Fuels Criticism of Initial Trial Results

Critics Ignore Long Standing Realities Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings...

PTAB Grants First Motion to Amend in IPR

Patentee Successfully Narrows Claims in IPR Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump...

Gaming IPR Estoppel

Outdated Patent Drafting Techniques Present Opportunities The Patent Trial & Appeal Board (PTAB) poses a significant threat to patent monetization. Not because the PTAB is anti-patent , far from it, but because the patents challenged today were drafted for the scrutiny of the district court. That...

Inexperienced Attorneys Tax PTAB Resources

Growth in PTAB Post-Grant Filings May Require Changes to Workflow This time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase. One year later, the PTAB...

75% Success Rate for IPR Driven Stays

District Court Stays on the Rise Thanks to PTAB Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination...

PTAB Institution Rate Dips Into 60% Range

Past Three Months of PTAB Statistics Tell A Different Story Last week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year . However, the averaging...

Fitch Even IP Alert: PTAB Denies IPR Petition Based on Procedural Considerations

by Timothy R. Baumann On July 23, 2014, the Patent Trial and Appeal Board (PTAB) issued a decision in Zetec, Inc. v. Westinghouse Electric, LLC , that denied Zetec of an inter partes review (IPR) on the basis that it has discretion to deny petitions without considering the substantive merits of the...

PTAB Cracks Down on Copy Cat AIA Petitions

Follow-On Filings Thwarted by 35 U.S.C. §325(d) Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to...

Backflow to Add to Growing PTAB Workload

Rehearing Requests & CAFC Remands to Tax PTAB Resources As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB) . Likewise, sometimes the Solicitor will seek remand in appropriate...

Managing an Inter Partes Review Tidal Wave: The PTAB’s Administrative Approach to the Zond IPRs

by Michelle Carniaux and Michael E. Sander What does a patent owner do when they are facing 125 petitions for inter partes review in a single year? How does the Board properly handle proceedings with nearly a dozen petitioners, with overlapping arguments and prior art? When we last wrote about...

Impact of Requests for Rehearing on Overall IPR Pendency

Trial Section Outpaces PTAB Average As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board's...

Record AIA Petitions Filed with PTAB in October

October Brings 195 AIA Patent Challenge Petitions to PTAB Post-grant, patent challenge mechanisms of the America Invents Act (AIA) continue to surge in popularity. Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges have been pouring into the Patent Trial & Appeal Board...

Amendment Efforts at PTAB Trend Downward

Multiple Factors Drive Downtrend in Amendments at PTAB Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended...

Proposed Amended Complaint Not Served Under IPR Statute 315(b)

PTAB Designates Decision as Informative on 315(b) Question Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that...

PTAB Considers Unplugging Hedge Fund Filings

Hedge Fund IPR Scheme Unraveling Last week, the USPTO's Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on an alleged abuse of process by Bass & Co. for...

Is RPI/Privity an Issue of PTAB Standing?

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments : Real Party in Interest: 5. Should a patent owner be able to raise a challenge regarding a real party...

PTAB Cheat Sheet for House Bill

[UPDATE: Given the burgeoning opposition to the "Innovation Act" (H.R. 9) , the current bill was pulled from floor consideration this morning. Back to the drawing board. As to at least the PTAB changes, the focus can now appropriately turn to the imminent rule package of the agency. USPTO...

Beginning of the End for Kyle Bass & Friends

Motion for Sanctions Details True Hedge Fund Motives On Wednesday, Celgene filed its Motion for Sanctions against the Coalition for Affordable Drugs in IPR2015-01092, 1096, 1002, and 1103. The Patent Trial and Appeal Board (PTAB) now has until October 28th to decide the issue. As I have maintained...

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...

PTAB Issues Rule Long Awaited Rules Package

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...