AIA Trials Drive PTAB Growth to 235+ Judges
The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board...
So Let It Be Written, So Let It Be Done...Your Patent Portfolio That Is
Two weeks back I discussed the " patentee estoppel " impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial...
Expanded PTAB Panel Outlines Requirements for Unregistered Practitioners
Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c...
PTAB Definition of "Proceeding" Found Inconsistent With the Law
Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. ( here ) , the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America...
PTAB Claim Analysis Can Serve as Persuasive Authority
Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial...
On August 13, 2014, in Fidelity National Information Services, Inc., v. DataTreasury Corp. , the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) of two patents because the petition included “voluminous”...
Stay Calculus to Encourage Multi-Defendant
As the new patentability trials of the America Invents
Act (AIA) have only been available for 7 months, their impact is only now
beginning to be felt in the district courts. The new USPTO Patent...
Raising of Evidentiary Informalities Prior to
During PTAB patentability proceedings, the Federal Rules
of Evidence are applied. And, while the USPTO's definition of a "proceeding'
includes the preliminary proceeding...
PTAB Scheduling Orders Begin Suggesting ADR Statements
The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties...
Over the years, the PTAB has shed it's "super-examiner" role to more of that of an umpire- calling balls and strikes. That is to say, the PTAB has drifted toward a relatively narrower view of the scope of issues it will substantively review...
Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term
In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent...
First PGR Petition Argues Patent is FITF Based on 112 Deficiency
Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is...
Reduction in Incoming Requests & InterPartes Workload to Free Up Resources
Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last...
Final Rules Modified to Address Most Common Criticisms
Yesterday's [August 14th] printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort...
for Rehearing May Backfire on Patentees
As detailed earlier this week, a patentee's decision to
file a preliminary response in an IPR/CBM preliminary proceeding is not
as straightforward as one would expect . Where such a preliminary...