LexisNexis® Legal Newsroom
NPEs Unwittingly Invite Lopsided Battles at PTAB

Stay Calculus to Encourage Multi-Defendant Attacks 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 Trial & Appeal Board (PTAB) proceedings permit...

Should You Request a Rehearing of Your PTAB Trial Order?

Requests 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 response is imprudently pursued by a patentee this...

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 Receives First PGR Petition

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 directed to a craft kit for making linked bracelets...

PTAB Triples in Size Since 2011

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 (PTAB) on appeal and AIA trial proceedings. Much...

Leveraging PTAB Claim Analysis in the District Court

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 guidance on matters of claim construction. Typically...

PTAB Divided Over Practice of Issue Joinder

Expanded Panel at Odds Over Statutory Interpretation of § 315(c) Yesterday, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp ., (IPR2014-00508) ( here ). In the Order, a divided panel denied issue joinder under 35 U.S...

PTAB Expanded Panel Reverses Field on Issue Joinder

Issue Joinder within Statute, Matter of Agency Discretion At the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because...

PTAB Moves Forward on Quick-Fix Rule Changes

Page Limit Changes Effective Immediately for All AIA Trial Filings The USPTO's Patent Trial & Appeal Board (PTAB) announced some of their "quick fix" rule changes March 27 in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits , the...

CAFC Ruling Calls Into Question PTAB Settlement Authority

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 Invents Act (AIA) is triggered by the mere filing...

PTAB & Alternative Dispute Resolution

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. This discretionary power to terminate a patentability...