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Uncertainty on Estoppel of Claims Amended at the PTAB

Since the Leahy-Smith America Invents Act (AIA) was enacted in 2011, thousands of petitions have been filed to request institution of inter partes review (IPR) to challenge patents. Upon the issuance of a final written...more

Supreme Court Upholds IPRs but Strikes Down Partial PTAB Decisions in Two Important Patent Cases

The Supreme Court today decided two important cases involving patent rights and inter partes review at the US Patent and Trademark Office (PTO). Both cases affirm the importance of Post-Grant Proceedings as a part of an...more

The Use of Applicant Admitted Prior Art in IPR Petitions

Admissions made by the patentee, either in the patent specification or during the course of prosecution, identifying a particular work as ‘‘prior art’’ can be relied upon for both anticipation and obviousness determinations....more

How the PTAB Treats Pre-Institution Factual Disputes

As a result of recent changes in the PTAB rules of practice, counsel for patent owners should consider whether there are opportunities to identify factual deficiencies in petitions. Counsel for petitioners in inter partes...more

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more

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