The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more
It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more
12/28/2020
/ Administrative Patent Judges ,
America Invents Act ,
Article III ,
Burden of Persuasion ,
Burden of Proof ,
Intellectual Property Protection ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patents ,
Standing ,
Substitute Claims ,
USPTO
A panel of the US Patent Trial and Appeal Board has identified “limited circumstances” in which a patent challenger can join its own inter partes review petition to add new issues. Parties seeking to join their own petitions...more
The first update to the Patent Trial and Appeal Board Trial Practice Guide includes guidance that will benefit both petitioners and patent owners, from updates regarding expert testimony and motions to exclude and to strike,...more
The Federal Circuit recently reversed course and expanded judicial review of PTAB institution decisions to include time-bar determinations, potentially clearing a path for petitioners and patent owners to appeal other...more
1/11/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
Broadcom ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
A recent Federal Circuit ruling shifts the burden to petitioners, which will likely lead to patent owners filing more motions to amend....more
Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more
5/3/2017
/ America Invents Act ,
Claim Construction ,
Discovery ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patent Wars ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
A patent does not qualify for “covered business method” review if its claims are only incidental to a financial activity.
The US Court of Appeals for the Federal Circuit (CAFC) recently decided that a claimed method (in...more
The new rules, which go into effect on May 2, 2016, will impact strategies for petitioners and patent owners alike.
On April 1, the US Patent and Trademark Office (Office) published a set of new rules for post-grant...more
The PTAB issues its second round of proposed rule changes.
The Patent Trial and Appeal Board (PTAB) just issued its second round of proposed rule changes to post-patent issuance review proceedings (Inter Partes Reviews,...more
8/26/2015
/ Additional Discovery ,
America Invents Act ,
Claim Construction ,
Comment Period ,
Confidential Information ,
Covered Business Method Proceedings ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Regulation ,
Rule 11 ,
USPTO