PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA)

Size: px
Start display at page:

Download "PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA)"

Transcription

1 I. Prior to AIA, there were two primary ways for a third party to invalidate a patent in the patent office: A. Interference under 35 U.S.C. 135 & 37 C.F.R , which was extremely limited, as it required: 1. Must have a patent application on file with claims drawn to the same invention as the patent; 2. Patent office must agree that the claims are the same; and 3. Must prove earlier invention and first to file won 90 percent or so of the time. B. Reexamination ex parte or inter partes 1. Ex parte under 35 U.S.C and 37 C.F.R for any patent, but you only get to participate pre-declaration of the reexamination and only grounds are unpatentability over a patent or printed publication 2. Inter partes under 35 U.S.C and 37 C.F.R , for any patent filed on or after November 29, 1999 and only grounds were unpatentability over a patent or printed publication. II. UNDER AIA, THERE ARE SOME OLD AND NEW AND BETTER CHOICES A. REEXAMINATION: 1. Ex parte reexamination still exists and is essentially the same. 2. Inter partes reexamination is no longer available as of September 16, As of that date, you cannot bring an inter partes reexamination at all, even for previously filed applications. AIA Sec 7(e) and 7(e)(2)-7(e)(3). B. POST GRANT REVIEW (PGR): 1. A trial like proceeding in the patent office in front of three (3) patent office appeals judges. 35 USC 6(c). One petitions for review. 35 U.S.C Page 1 of 10

2 Page 2 of 10 Patent owner has an optional preliminary response to petition. 35 U.S.C PTAB judges decide whether to invoke the PGR or not. a. Sufficient grounds. Post-grant review shall not be instituted for a ground of unpatentability, unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed. b. Additional grounds. Sufficient grounds under (c) may be a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.) 37 C.F.R (c)-(d); see also 35 U.S.C. 324(a). 3. Standard is unpatentable by a preponderance of the evidence. 37 C.F.R. 42.1(d), 37 C.F.R (c); 35 U.S.C. 324(a). 4. Claims given their broadest reasonable interpretation. 37 C.F.R (b). 5. Applies to patents filed March 16, a. The changes for post-grant review proceedings generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the AIA (subpart C). In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order any interference commenced before September 16, 2012, to be dismissed without prejudice to the filing of a for post-grant review. See (d) and 6(f)(3)(A) of the AIA. Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg , August 14, 2012) 6. Available only in the first 9 months following patent grant. 37 C.F.R a. A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the

3 issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent. 7. Keep an eye on issuing patents and docket the PGR deadline. 8. Anyone can challenge the patent. A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent unless: (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; or (b) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. 37 C.F.R Grounds include not only printed publications and patents, but also any ground that can be raised under Section 282(b) of the Patent Act, including subject matter ineligibility under 35 U.S.C. 101, failure to provide a written description under 35 U.S.C. 112, or failure to describe the invention in sufficient detail to enable a person of ordinary skill in the art to practice the claimed invention without undue experimentation under 35 U.S.C U.S.C. 321(b); Best mode is no longer a basis for invalidity under 35 U.S.C C.F.R Estoppel effect: Estoppel applies to proceedings before the USPTO and in civil actions and other proceedings on grounds actually raised and all grounds that could reasonably have been raised. 35 U.S.C. 325(e)(1) and (e)(2). 11. Barred by prior filed civil action: A post grant review may not be instituted if the petitioner or real-party-in-interest filed a civil action challenging the validity of a claim of the patent. 35 U.S.C. 325(a)(1). Page 3 of 10

4 12. Discovery is limited to factual assertions advanced by either party in the proceeding. 35 U.S.C. 326(a)(5). C. INTER PARTES REVIEW (IPR): 1. Like PGR, except: 2. Inter Partes Review is not available until nine months after the patent s issue date, or the end of PGR 35 U.S.C. 311(c). 3. Inter Partes Review is not allowed if the petitioner has waited more than one year after being served with a complaint (35 U.S.C. 315(b)) or if the petitioner previously filed a civil action challenging the validity of a claim of the patent. 35 U.S.C. 315(a)(1) and (b). 4. Depositions of witnesses submitting affidavits is permitted, as well as other discovery necessary in the interest of justice. 35 U.S.C. 316(a)(5). 5. Estoppel is triggered by the final written decision of the PTAB (35 U.S.C. 318(a)), and applies to proceedings before the USPTO and in civil actions and other proceedings to any grounds that the petitioner raised or reasonably could have raised. 35 U.S.C Applies to patents filed at any time: a. The changes for inter partes review proceedings apply to any patent issued before, on, or after September 16, 2012 (subpart B). Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg , August 14, 2012) Page 4 of 10

5 D. TRANSITIONAL PROGRAM FOR REVIEW OF A COVERED BUSINESS METHOD PATENT (CBM): 1. Purpose: To challenge business method patents 2. Only available for a covered business method patent. 37 C.F.R (a). 3. Only available for a limited time: Sept. 16, 2012 to September 15, C.F.R (d). 4. Available no matter when the application was filed or issued: The changes for transitional program for covered business method patents apply to any covered business method patent issued before, on, or after September 16, 2012 (subpart D). Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg , August 14, 2012) 5. CBM definition is: (a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. (b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section (a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 37 C.F.R (a) and (b). 6. Example of a CBM claim (as determined by the PTAB in a CBM proceeding): Page 5 of 10

6 Page 6 of A method of informing users of stock market events comprising the steps of: (a) receiving real-time stock market data on a network of computers; (b) receiving on the network of computers instructions from a user to specify watch data defining an event, the watch data including a stock market technical analysis request specifying technical analysis formulae to be applied to the real-time stock market data; (c) using the network of computers to periodically apply the user-specified watch data including the stock market technical analysis formulae to the real-time stock market data in real-time to ascertain whether a valid response to the watch data has occurred based on the real-time stock market data, thereby determining an occurrence of the event defined by the user-specified watch data; and (d) causing a real-time notification by the network of computers to be provided to the user via a remote communications device upon the occurrence of the event defined by the user-specified watch data, the realtime notification directed to a remote communications device of the user so that the user can then provide instructions for share market transactions on an instantaneous basis. 7. CBM may be filed at any time except during the 9 month window for PGR filing (after grant of a patent or issuance of a reissue patent). 37 C.F.R Standard: unpatentable by a preponderance of the evidence. 37 C.F.R. 42.1(d). 9. BASES: Any grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), including 101, 102, 103, C.F.R CBM timeframe is based on PGR timeframe: A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review

7 Page 7 of 10 procedures set forth in subpart C except for , , , and C.F.R (a). (1) petition (2) patent owner optional opposition/response brief within time period set by board (3 months); (b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute a post-grant review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.); 37 C.F.R (b). (3) board decides whether to invoke the trial proceeding within 3 months of the opposition/response, if any is filed, then Board issues decision plus an order for scheduling. 35 U.S.C. 324(c). (4) After institution of trial proceeding, pendency before the Board is normally no more than one year, but can be extended by up to six months for good cause by the Chief Administrative Patent Judge. 37 C.F.R (d). 11. Two Kinds of Estoppel: In civil actions and before the ITC, actually raised. AIA Sec 18(a)(1)(D). Before the USPTO, raised or reasonably could have raised during the trial C.F.R a. The petitioner in a transitional proceeding that results in a final written decision under Section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, or the petitioner's real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding. AIA Sec 18(a)(1)(D). i. FINAL WRITTEN DECISION.--If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and

8 Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). 35 U.S.C. 328(a). b. Estoppel. (1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or C.F.R E. Derivation Proceeding (A limited replacement of interference) 1. Derivation proceeding may be filed within the one-year period following publication of a claim to an invention that is the same or substantially the same as the earlier application s claim to the allegedly derived invention. 37 C.F.R Petition must demonstrate a) that the petitioner has at least one claim that is the same or substantially the same as the respondent s claimed invention; and b) that the claimed invention was derived from an inventor named in the petition, and the earlier filing was unauthorized. 37 C.F.R III. OTHER PROCEDURES: A. Third Party Submission (similar to prior Post Publication Submission): 1. Must be signed, but real-party-in-interest apparently need not be disclosed any more. 2. Must include a document list; a description of the relevance of the art to the application; a legible copy of each item other than US applications and patents. 37 C.F.R (d). Page 8 of 10

9 3. The pre-issuance submission must be filed before the earlier of 1) a Notice of Allowance or 2) the later of either a) six months after publication of the application or b) the first rejection of the application. 37 C.F.R For every 10 items listed, the fee is $180 for large entities, $90 for small. 37 C.F.R (d); 37 C.F.R. 1.17(p). IV. POSSIBLE STRATEGIES FOR USE OF PGR, IPR & CBM Follow issuing patents in your technology or your clients technology and docket 9 months for filing a PGR. If you are the patent owner, and you see a potential infringement, wait before sending a cease and desist for 9 months after the patent issues (to rule out PGR-so no 112 and no 101 challenge can be brought unless it fits into CBM). Use PGR for broader attack on a patent where 112 and 101 are issues or use CBM where possible for such broader attack Use IPR to limit estoppel 112 and 101 will not be estopped (because you can t bring 112 and 101 challenges so those will not be estopped). Do not sue for DJ action before bringing an IPR proceeding (if you want to bring IPR). Docket 1 year from being sued for bringing IPR. Consider CBM and IPR for patents where it is iffy as to whether it is a CBM ( a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service but not a technological invention ). Consider CBM because estoppel is narrower (only actual) and because there is no deadline. Consider using CBM or IPR or PGR to get a detailed claim interpretation even if validity may be difficult to challenge. Page 9 of 10

10 Where there is pending litigation, consider reexamination in addition to CBM or IPR if you want to move for a stay sooner in your case. Why? Because CBM and IPR can take 6 or more months for an initial decision, while reexamination will take only 90 days maximum for the initial decision. Courts should grant stays more liberally with PGR, CBM and/or IPR pending than with reexaminations because: i. the CBM, PGR and IPR proceedings are limited in time to one year trial period (or 1.5 years with cause); ii. these proceedings are conducted by the PTAB (as opposed to one examiner), b/c the decisions are very detailed; iii. in the AIA legislative history, Senators, e.g. Senator Schumer, believed that it is hard to imagine a Court not staying a case where there proceedings are pending; iv. the estoppel effect typically will greatly simplify the Court s issues; and v. these proceedings involve discovery and other litigation-like procedures. Some difficult questions: Will reasonably could have brought mean you have to do a patent validity search or will you be estopped from all 102/103 challenges based on prior art that could have been brought in a PGR or IPR? Page 10 of 10

America Invents Act Implementing Rules. September 2012

America Invents Act Implementing Rules. September 2012 America Invents Act Implementing Rules September 2012 AIA Rules (Part 2) Post Grant Review Inter Partes Review Section 18 Proceedings Derivation Proceedings Practice before the PTAB 2 Post Grant Review

More information

POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER

POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER PATENT TRIAL AND APPEAL BOARD (PTAB) COMPOSITION DIRECTOR DEPUTY DIRECTOR COMMISSIONER FOR PATENTS COMMISSIONER FOR TRADEMARKS APJ 2 PATENT

More information

Post-Grant Patent Proceedings

Post-Grant Patent Proceedings Post-Grant Patent Proceedings The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after September 16, 2012, for challenging the validity of

More information

America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings

America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings PRESENTATION TITLE America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings Wab Kadaba February 8, 2012 1 America Invents Act of 2011 Signed by President Obama on Sept. 16, 2011

More information

2012 Winston & Strawn LLP

2012 Winston & Strawn LLP 2012 Winston & Strawn LLP How the America Invents Act s Post-Issuance Proceedings Influence Litigation Strategy Brought to you by Winston & Strawn s Intellectual Property practice group 2012 Winston &

More information

U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act

U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act February 16, 2012 Practice Groups: Intellectual Property Intellectual Property Litigation U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents

More information

New Post Grant Proceedings: Basics by

New Post Grant Proceedings: Basics by New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes

More information

IPRs and CBMs : The Good, the Bad, and the Unknown. Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014

IPRs and CBMs : The Good, the Bad, and the Unknown. Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014 IPRs and CBMs : The Good, the Bad, and the Unknown Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014 The Governing Statutes 35 U.S.C. 311(a) In General. Subject to the

More information

United States Patent and Trademark Office. Patent Trial and Appeal Board

United States Patent and Trademark Office. Patent Trial and Appeal Board United States Patent and Trademark Office Patent Trial and Appeal Board PTAB Organization Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall

More information

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition Dave Cochran Jones Day Cleveland December 6, 2012 Part 1: Impact on Litigation Strategy

More information

America Invents Act (AIA) Post-Grant Proceedings

America Invents Act (AIA) Post-Grant Proceedings America Invents Act (AIA) Post-Grant Proceedings Various Post-Grant Proceedings under AIA Ex parte reexamination Modified by AIA Sec. 6(h)(2) Continue to be available under AIA Inter partes reexamination

More information

T he landscape for patent disputes is changing rapidly.

T he landscape for patent disputes is changing rapidly. BNA s Patent, Trademark & Copyright Journal Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc.

More information

Considerations for the United States

Considerations for the United States Considerations for the United States Speaker: Donald G. Lewis US Patent Attorney California Law Firm Leahy-Smith America Invents Act First Inventor to file, with grace period Derivation Actions Prior user

More information

Strategic Use of Post-Grant Proceedings In Light of Patent Reform

Strategic Use of Post-Grant Proceedings In Light of Patent Reform Strategic Use of Post-Grant Proceedings In Light of Patent Reform October 11, 2011 The Leahy-Smith America Invents Act U.S. House of Representatives passed H.R. 1249 (technical name of the bill) on June

More information

Inter Partes and Covered Business Method Reviews A Reality Check

Inter Partes and Covered Business Method Reviews A Reality Check Inter Partes and Covered Business Method Reviews A Reality Check Wab Kadaba Chris Durkee January 8, 2014 2013 Kilpatrick Townsend Agenda I. IPR / CBM Overview II. Current IPR / CBM Filings III. Lessons

More information

POST-GRANT REVIEW UNDER THE AMERICA INVENTS ACT GERARD F. DIEBNER TANNENBAUM, HELPERN, SYRACUSE & HIRSCHTRITT LLP

POST-GRANT REVIEW UNDER THE AMERICA INVENTS ACT GERARD F. DIEBNER TANNENBAUM, HELPERN, SYRACUSE & HIRSCHTRITT LLP POST-GRANT REVIEW UNDER THE AMERICA INVENTS ACT GERARD F. DIEBNER TANNENBAUM, HELPERN, SYRACUSE & HIRSCHTRITT LLP TABLE OF CONTENTS Page I. Introduction... 1 II. Post-Grant Review Proceedings... 1 A. Inter-Partes

More information

The New Post-AIA World

The New Post-AIA World Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The New Post-AIA World New Ways to Challenge a US Patent or Patent Application Erika Arner FICPI ABC 2013 Conference New Orleans, LA 0 Third Party Patent

More information

Post-Grant Proceedings in the USPTO

Post-Grant Proceedings in the USPTO Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Post-Grant Proceedings in the USPTO Erika Arner Advanced Patent Law Institute, Palo Alto, CA December 12, 2013 0 Post-Grant Proceedings New AIA proceedings

More information

Patent Prosecution in View of The America Invents Act. Overview

Patent Prosecution in View of The America Invents Act. Overview Patent Prosecution in View of The America Invents Act Courtenay C. Brinckerhoff David Dutcher Paul S. Hunter 2 Overview First-To-File (new 35 U.S.C. 102) Derivation Proceedings New Proceedings For Patent

More information

SEC. 6. AIA: POST-GRANT REVIEW PROCEEDINGS

SEC. 6. AIA: POST-GRANT REVIEW PROCEEDINGS SEC. 6. AIA: POST-GRANT REVIEW PROCEEDINGS (a) INTER PARTES REVIEW. Chapter 31 of title 35, United States Code, is amended to read as follows: Sec. 3 1 1. I n t e r p a r t e s r e v i e w. 3 1 2. P e

More information

USPTO Post Grant Trial Practice

USPTO Post Grant Trial Practice Bill Meunier, Member Michael Newman, Member Peter Cuomo, Of Counsel July 18, 2016 Basics: Nomenclature "IPRs" = Inter partes review proceedings "PGRs" = Post-grant review proceedings "CBMs" = Post-grant

More information

PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences

PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences Finnegan, Henderson, Farabow, Garrett & Dunner, LLP PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences 2015 National CLE Conference Friday, January 9, 2015 Presented by Denise

More information

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch October 11-12, 2011

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch   October 11-12, 2011 America Invents Act H.R. 1249 (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch www.bskb.com October 11-12, 2011 H.R. 1249 became law Sept. 16, 2011 - Overview first inventor

More information

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense September 16, 2011 Practice Groups: IP Procurement and Portfolio Management Intellectual Property Litigation Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense On September

More information

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary PRESENTATION TITLE America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary Christopher M. Durkee James L. Ewing, IV September 22, 2011 1 Major Aspects of Act Adoption of a first-to-file

More information

CBM Eligibility and Reviewability

CBM Eligibility and Reviewability CBM Eligibility and Reviewability Karl Renner John Phillips Andrew Patrick Webinar Series March 12, 2014 Agenda #fishwebinar @FishPostGrant I. Overview of Webinar Series II. Statistics III. Covered Business

More information

AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions

AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions Christopher Persaud, J.D., M.B.A. Patent Agent/Consultant Patent Possibilities Tyler McAllister, J.D. Attorney at Law

More information

AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP

AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, 2012 A Web conference hosted by Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome

More information

The America Invents Act : What You Need to Know. September 28, 2011

The America Invents Act : What You Need to Know. September 28, 2011 The America Invents Act : What You Need to Know September 28, 2011 Presented by John B. Pegram J. Peter Fasse 2 The America Invents Act (AIA) Enacted September 16, 2011 3 References: AIA = America Invents

More information

The America Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys

The America Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys The America Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys James Morando, Jeff Fisher and Alex Reese Farella Braun + Martel LLP After many years of debate,

More information

Changes at the PTO. October 21, 2011 Claremont Hotel. Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP

Changes at the PTO. October 21, 2011 Claremont Hotel. Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP Changes at the PTO October 21, 2011 Claremont Hotel Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP Overview: Changes at the PTO Some Causes for Reform Patent Trial and Appeals

More information

Policies of USPTO Director Kappos & U.S. Patent Law Reform

Policies of USPTO Director Kappos & U.S. Patent Law Reform Policies of USPTO Director Kappos & U.S. Patent Law Reform December 15, 2011 Speaker: Ron Harris The Harris Firm ron@harrispatents.com The USPTO Under Director David Kappos USPTO Director David Kappos

More information

Inter Partes Review vs. District Court Litigation

Inter Partes Review vs. District Court Litigation Inter Partes Review vs. District Court Litigation February 19, 2015 2 PM ET Ha Kung Wong Inter Partes Review vs. District Court Litigation February 19, 2015 2 PM ET Ha Kung Wong Debbie Gibson v. Tiffany

More information

Part V: Derivation & Post Grant Review

Part V: Derivation & Post Grant Review Strategic Considerations in View of the USPTO s Proposed Rules Part V: Derivation & Post Grant Review Presented By: Karl Renner, Sam Woodley & Irene Hudson Fish & Richardson AIA Webinar Series Date March

More information

Intellectual Property: Efficiencies in Patent Post-Grant Proceedings

Intellectual Property: Efficiencies in Patent Post-Grant Proceedings Intellectual Property: Efficiencies in Patent Post-Grant Proceedings By Ann Fort, Pete Pappas, Karissa Blyth, Robert Kohse and Steffan Finnegan The Leahy-Smith America Invents Act of 2011 (AIA) created

More information

The Scope and Ramifications of the New Post-Grant and Inter Partes Review Proceedings at the USPTO

The Scope and Ramifications of the New Post-Grant and Inter Partes Review Proceedings at the USPTO The Scope and Ramifications of the New Post-Grant and Inter Partes Review Proceedings at the USPTO By Lawrence A. Stahl and Donald H. Heckenberg The Leahy-Smith America Invents Act (AIA) makes numerous

More information

Discovery and Fact Investigation: New Patent Office Procedures under America Invents Act

Discovery and Fact Investigation: New Patent Office Procedures under America Invents Act 2013 Korea-US IP Judicial Conference (IPJC) Seminar 1 Discovery and Fact Investigation: New Patent Office Procedures under America Invents Act Nicholas Groombridge Discovery in District Court Litigations

More information

The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews

The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews By: Lawrence Stahl and Donald Heckenberg The Leahy-Smith America Invents Act (AIA) includes

More information

America Invents Act September 19, Matt Rainey Vice President/Chief IP Policy Counsel

America Invents Act September 19, Matt Rainey Vice President/Chief IP Policy Counsel America Invents Act September 19, 2011 Matt Rainey Vice President/Chief IP Policy Counsel Leahy-Smith America Invents Act (AIA) Text is available at: http://www.gpo.gov/fdsys/pkg/bills-112hr1249enr/pdf/bills-112hr1249enr.pdf

More information

America Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck

America Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck America Invents Act (AIA) Post-Grant Proceedings Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck What is included in Post-Grant Reform in the U.S.? Some current procedures are modified and some new ones

More information

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial:

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial: USPTO Implementation of the America Invents Act Janet Gongola Patent Reform Coordinator Janet.Gongola@uspto.gov Direct dial: 571-272-8734 Three Pillars of the AIA 11/30/2011 2 Speed Prioritized examination

More information

Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board

Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Asserting rights are no longer the province of pencil-pushing technology companies. Many businesses, big and small

More information

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES BY: Juan Carlos A. Marquez Stites & Harbison PLLC 1 OVERVIEW I. Summary Overview of AIA Provisions II. Portfolio Building Side

More information

Post-Grant Proceedings at the Patent Office After Passage of the America Invents Act

Post-Grant Proceedings at the Patent Office After Passage of the America Invents Act Post-Grant Proceedings at the Patent Office After Passage of the America Invents Act Patrick A. Doody, Partner Northern Virginia Office America Invents Act (AIA) S 23 Senate Verison Passed the Senate in

More information

AMERICA INVENTS ACT. Changes to Patent Law. Devan Padmanabhan Shareholder, Winthrop & Weinstine

AMERICA INVENTS ACT. Changes to Patent Law. Devan Padmanabhan Shareholder, Winthrop & Weinstine AMERICA INVENTS ACT Changes to Patent Law Devan Padmanabhan Shareholder, Winthrop & Weinstine American Invents Act of 2011 Enacted on September 16, 2011 Effective date for most provisions was September

More information

Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing

Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing May 28, 2014 R. David Donoghue Holland & Knight LLP 131 South Dearborn

More information

Venue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board

Venue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board The Patent Trial and Appeal Board Created by statute, and includes statutory members and Administrative Patent Judges Claim Amendments During AIA Proceedings The PTAB is charged with rendering decisions

More information

A Practical Guide to Inter Partes Review. Strategic Considerations Relating To Termination

A Practical Guide to Inter Partes Review. Strategic Considerations Relating To Termination A Practical Guide to Inter Partes Review Strategic Considerations Relating To Termination Webinar Guidelines Participants are in listen-only mode Submit questions via the Q&A box on the bottom right panel

More information

Presented to The Ohio State Bar Association. May 23, 2012

Presented to The Ohio State Bar Association. May 23, 2012 Your Guide to the America Invents Act (AIA) Presented to The Ohio State Bar Association May 23, 2012 Overview A. Most comprehensive change to U.S. patent law in over 60 years; signed into law Sept. 16,

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs LeClairRyan December 2011 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

U.S. Patent Law Reform The America Invents Act

U.S. Patent Law Reform The America Invents Act U.S. Patent Law Reform The America Invents Act August 15, 2011 John B. Pegram Fish & Richardson What s New in 2011? Patent Law Reform is high on Congressional agenda A desire to legislate Bipartisan Patent

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr. LeClairRyan January 4 th 2012 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

18-MONTHS POST-AIA: HOW HAS PATENT LITIGATION. Rebecca Hanovice, Akarsh Belagodu, Lauren Bruzzone and Clay Holloway

18-MONTHS POST-AIA: HOW HAS PATENT LITIGATION. Rebecca Hanovice, Akarsh Belagodu, Lauren Bruzzone and Clay Holloway CHEAT SHEET Increased petitioner participation and evidence gathering throughout the AIA post-grant proceeding provides more incentive for petitioners to pursue patent office litigation. Decreased opportunities

More information

BCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer

BCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer BCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer Agenda Overview of AIA Post-Grant Approach More Lenses on Patents After Issuance Section 6 Post-Grant Review Proceedings

More information

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC TECHNOLOGY & BUSINESS LAW ADVISORS, LLC www.tblawadvisors.com Fall 2011 Business Implications of the 2011 Leahy-Smith America Invents Act On September 16, 2011, the Leahy-Smith America Invents Act (AIA)

More information

Post Grant Review. Strategy. Nathan Frederick Director, IP Services

Post Grant Review. Strategy. Nathan Frederick Director, IP Services Post Grant Review Strategy Nathan Frederick Director, IP Services Cardinal Intellectual Property 1603 Orrington Avenue, 20th Floor Evanston, IL 60201 Phone: 847.905.7122 Fax: 847.905.7123 Email: mail@cardinal-ip.com

More information

Can I Challenge My Competitor s Patent?

Can I Challenge My Competitor s Patent? Check out Derek Fahey's new firm's website! CLICK HERE Can I Challenge My Competitor s Patent? Yes, you can challenge a patent or patent publication. Before challenging a patent or patent publication,

More information

How To ID Real Parties-In-Interest In Inter Partes Review

How To ID Real Parties-In-Interest In Inter Partes Review Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com How To ID Real Parties-In-Interest In Inter Partes

More information

Chapter 1. Introduction

Chapter 1. Introduction Chapter 1 Introduction 1:1 Evolution of the Leahy-Smith America Invents Act 1:1.1 Recommendations for Patent System Reform [A] The FTC Report and NRC Report [B] Patent Reform Bills 1:1.2 The Patent Reform

More information

NEW US PATENT CHALLENGE PROCEDURES PROMOTE GLOBAL HARMONISATION, BUT CASUALTIES RUN HIGH

NEW US PATENT CHALLENGE PROCEDURES PROMOTE GLOBAL HARMONISATION, BUT CASUALTIES RUN HIGH NEW US PATENT CHALLENGE PROCEDURES PROMOTE GLOBAL HARMONISATION, BUT CASUALTIES RUN HIGH REPRINTED FROM: CORPORATE DISPUTES MAGAZINE APR-JUN 2016 ISSUE corporate CDdisputes Visit the website to request

More information

Post-Grant Patent Practice: Review & Reexamination Course Syllabus

Post-Grant Patent Practice: Review & Reexamination Course Syllabus Post-Grant Patent Practice: Review & Reexamination Course Syllabus I. CHALLENGING PATENT VALIDITY AT THE PTO VIA POST-GRANT REVIEW, INTER PARTES REVIEW, BUSINESS METHOD PATENT REVIEW, AND REEXAMINATION

More information

Patent Litigation With Non-Practicing Entities: Strategies, Trends and

Patent Litigation With Non-Practicing Entities: Strategies, Trends and Patent Litigation With Non-Practicing Entities: Strategies, Trends and Techniques ALFRED R. FABRICANT 20 th Annual Fordham Intellectual Property Conference April 12, 2012 2011 Winston & Strawn LLP Leveling

More information

PATENT DISCLOSURE: Meeting Expectations in the USPTO

PATENT DISCLOSURE: Meeting Expectations in the USPTO PATENT DISCLOSURE: Meeting Expectations in the USPTO Robert W. Bahr Acting Associate Commissioner for Patent Examination Policy United States Patent and Trademark Office 11/17/2016 1 The U.S. patent system

More information

SENATE PASSES PATENT REFORM BILL

SENATE PASSES PATENT REFORM BILL SENATE PASSES PATENT REFORM BILL CLIENT MEMORANDUM On Tuesday, March 8, the United States Senate voted 95-to-5 to adopt legislation aimed at reforming the country s patent laws. The America Invents Act

More information

CORRECTION OF ISSUED PATENTS

CORRECTION OF ISSUED PATENTS CORRECTION OF ISSUED PATENTS 2012 IP Summer Seminar Peter Corless Partner pcorless@edwardswildman.com July 2012 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Types of Correction Traditional

More information

Inter Partes Review (IPR): Lessons from the First Year Matthew I. Kreeger

Inter Partes Review (IPR): Lessons from the First Year Matthew I. Kreeger Inter Partes Review (IPR): Lessons from the First Year Matthew I. Kreeger mofo.com Inter Partes Review Key distinctive features over inter partes reexamination: Limited Duration Limited Amendment by Patent

More information

SPECIAL REPORT May 2018 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB

SPECIAL REPORT May 2018 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB SPECIAL REPORT May 2018 Spring 2017 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB On April 24, 2018, the United State Supreme

More information

USPTO Post Grant Proceedings

USPTO Post Grant Proceedings Post-Grant Proceedings Are You Ready to Practice Before the New PTAB? Bryan K. Wheelock January 30, 2013 USPTO Post Grant Proceedings The AIA created three post grant proceedings for challenging the validity

More information

Paper Entered: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Paper Entered: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Trials@uspto.gov Paper 9 571-272-7822 Entered: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PNC Bank, N.A. Petitioner, v. SECURE AXCESS, LLC, Patent

More information

What is Post Grant Review?

What is Post Grant Review? An Overview of the New Post Grant Review Proceedings at the USPTO Michael Griggs, Boyle Fredrickson May 15, 2015 What is Post Grant Review? Trial proceedings at the USPTO created by the America Invents

More information

Derived Patents and Derivation Proceedings: The AIA Creates New Issues In Litigation And PTO Proceedings

Derived Patents and Derivation Proceedings: The AIA Creates New Issues In Litigation And PTO Proceedings Derived Patents and Derivation Proceedings: The AIA Creates New Issues In Litigation And PTO Proceedings Walter B. Welsh The Michaud-Kinney Group LLP Middletown, Connecticut I. INTRODUCTION. The Leahy-Smith

More information

IN THE UNITED STATES PATENT TRIAL & APPEAL BOARD. CQG, INC. and CQGT, LLC. Petitioners, TRADING TECHNOLOGIES INTERNATIONAL, INC. Patent Owner.

IN THE UNITED STATES PATENT TRIAL & APPEAL BOARD. CQG, INC. and CQGT, LLC. Petitioners, TRADING TECHNOLOGIES INTERNATIONAL, INC. Patent Owner. IN THE UNITED STATES PATENT TRIAL & APPEAL BOARD CQG, INC. and CQGT, LLC Petitioners, v. TRADING TECHNOLOGIES INTERNATIONAL, INC. Patent Owner. U.S. Patent No. 6,772,132 B1 PETITION FOR COVERED BUSINESS

More information

Paper 24 Tel: Date: June 23, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Paper 24 Tel: Date: June 23, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Trials@uspto.gov Paper 24 Tel: 571-272-7822 Date: June 23, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LIFE TECHNOLOGIES CORPORATION, Petitioner, v. UNISONE

More information

Patent Prosecution Update

Patent Prosecution Update Patent Prosecution Update March 2012 Contentious Proceedings at the USPTO Under the America Invents Act by Rebecca M. McNeill The America Invents Act of 2011 (AIA) makes significant changes to contentious

More information

February, 2010 Patent Reform Legislative Update 1

February, 2010 Patent Reform Legislative Update 1 02 14 2011 February, 2010 Patent Reform Legislative Update 1 The Patent Law Reform Act of 2011, based on the Managers Amendment version of S. 515 in the 11 th Congress, was introduced as S. 23 on January

More information

Sughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley 7/2/2012

Sughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley 7/2/2012 Sughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley www.sughrue.com This presentation is for educational purposes only, and it does not provide legal advice or comment on the application of

More information

Post-Grant Reviews Before The USPTO

Post-Grant Reviews Before The USPTO Post-Grant Reviews Before The USPTO Mark Selwyn Donald Steinberg Emily Whelan November 19, 2015 Attorney Advertising Unless legally required, all instructions, directions or recommendations contained herein

More information

STATUS OF. bill in the. Given the is presented. language. ability to would be. completely. of 35 U.S.C found in 35. bills both.

STATUS OF. bill in the. Given the is presented. language. ability to would be. completely. of 35 U.S.C found in 35. bills both. STATUS OF PATENTT REFORM LEGISLATION On June 23, 2011, the United States House of Representatives approved its patent reform bill, H.R. 1249 (the Leahy-Smith America Invents Act). Thee passage follows

More information

POST GRANT PROCEEDINGS BEFORE THE PATENT TRIAL AND APPEAL BOARD. Oblon Spivak

POST GRANT PROCEEDINGS BEFORE THE PATENT TRIAL AND APPEAL BOARD. Oblon Spivak POST GRANT PROCEEDINGS BEFORE THE PATENT TRIAL AND APPEAL BOARD Oblon Spivak Foreword by Honorable Gerald Mossinghoff, former Commissioner of Patents and Trademarks, and Stephen Kunin, former Deputy Commissioner

More information

July 12, NPE Patent Litigation. The AIA s Impact on. Chris Marchese. Mike Amon

July 12, NPE Patent Litigation. The AIA s Impact on. Chris Marchese. Mike Amon The AIA s Impact on NPE Patent Litigation Chris Marchese Mike Amon July 12, 2012 What is an NPE? Non Practicing Entity (aka patent troll ) Entity that does not make products Thus does not practice its

More information

Pre-Issuance Submissions under the America Invents Act

Pre-Issuance Submissions under the America Invents Act Pre-Issuance Submissions under the America Invents Act By Alan Kendrick, J.D., Nerac Analyst The Leahy-Smith America Invents Act (AIA) was signed into law By President Obama in September 2011 and the final

More information

The use of prosecution history in post-grant patent proceedings

The use of prosecution history in post-grant patent proceedings Question Q229 National Group: United States Title: The use of prosecution history in post-grant patent proceedings Contributors: ADAMO, Kenneth R. ARROYO, Blas ASHER, Robert BAIN, Joseph MEUNIER, Andrew

More information

Patent Practice in View Of PTAB AIA Proceedings

Patent Practice in View Of PTAB AIA Proceedings Patent Practice in View Of PTAB AIA Proceedings FOR: AIPLA Spring Meeting, Minneapolis International Track I, Thurs. May 19th By: Rick Neifeld, Neifeld IP Law, PC http://www.neifeld.com 1 Resources Paper

More information

Patent Reform State of Play

Patent Reform State of Play Patent Reform Beyond the Basics: Exposing Hidden Traps, Loopholes, Landmines Powered by Andrew S. Baluch April 15, 2016 1 Patent Reform State of Play Congress 8 bills pending Executive Agencies IPR Final

More information

How To Fix The Amendment Fallacy

How To Fix The Amendment Fallacy Intellectual Property How To Fix The Amendment Fallacy This article was originally published in Managing Intellectual Property on April 28, 2014 by Patrick Doody Patrick A. Doody Intellectual Property

More information

This Webcast Will Begin Shortly

This Webcast Will Begin Shortly This Webcast Will Begin Shortly If you have any technical problems with the Webcast or the streaming audio, please contact us via email at: webcast@acc.com Thank You! 1 Quarterly Federal Circuit and Supreme

More information

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA CYPRESS SEMICONDUCTOR CORPORATION, v. Plaintiff, GSI TECHNOLOGY, INC., Defendant. Case No. -cv-00-jst ORDER GRANTING MOTION TO STAY Re: ECF

More information

(B) in section 316(a) 2. (i) in paragraph (11), by striking 3. section 315(c) and inserting section 4. (ii) in paragraph (12), by striking 6

(B) in section 316(a) 2. (i) in paragraph (11), by striking 3. section 315(c) and inserting section 4. (ii) in paragraph (12), by striking 6 (B) in section (a) (i) in paragraph (), by striking section (c) and inserting section (d) ; and (ii) in paragraph (), by striking section (c) and inserting section (d) ; and (C) in section (a), by striking

More information

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Trials@uspto.gov Paper 21 571-272-7822 Entered: April 13, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BANK OF THE WEST; SANTANDER BANK, N.A.; ALLY FINANCIAL,

More information

How to Handle Complicated IPRs:

How to Handle Complicated IPRs: How to Handle Complicated IPRs: Obviousness Requirements in Recent CAFC Cases and Use of Experimental Data OCTOBER 2017 nixonvan.com District Court Lawsuit Statistics Number of New District Court Cases

More information

Preemptive Use Of Post-Grant Review Vs. Inter Partes Review

Preemptive Use Of Post-Grant Review Vs. Inter Partes Review Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Preemptive Use Of Post-Grant Review Vs. Inter

More information

PATENT LAW DEVELOPMENTS

PATENT LAW DEVELOPMENTS PATENT LAW DEVELOPMENTS Patentable Subject Matter, Prior Art, and Post Grant Review Christine Ethridge Copyright 2014 by K&L Gates LLP. All rights reserved. DISCLAIMER The statements and views expressed

More information

Factors Affecting Success of Stay Motions Pending Inter Partes & Covered Business Method Review

Factors Affecting Success of Stay Motions Pending Inter Partes & Covered Business Method Review Factors Affecting Success of Stay Motions Pending Inter Partes & Covered Business Method Review Hosted by The Federal Circuit Bar Association October 21, 2016 Moderator: Kevin Hardy, Williams & Connolly

More information

How Post Grant Challenges Have Evolved from Proposed Rules to Practice. Prepared by W. Karl Renner Principal & Co Chair of Post Grant Practice

How Post Grant Challenges Have Evolved from Proposed Rules to Practice. Prepared by W. Karl Renner Principal & Co Chair of Post Grant Practice How Post Grant Challenges Have Evolved from Proposed Rules to Practice Prepared by W. Karl Renner Principal & Co Chair of Post Grant Practice Fish & Richardson May 8, 2013 Agenda I. Very Brief Orientation

More information

L DATE FILED: ~-~-~ lll'f

L DATE FILED: ~-~-~ lll'f Case 1:13-cv-03777-AKH Document 154 Filed 08/11/14 I USDC Page SL ~ y 1 of 10 I DOCJ.. 1.' '~"'"T. ~ IFLr"l 1-... ~~c "' ' CALL\ ELED DOL#: 1 UNITED STATES DISTRICT COURT L DATE FILED: ~-~-~ lll'f SOUTHERN

More information

CHALLENGING THE VALIDITY OF A U.S. PATENT UNDER THE AMERICA INVENTS ACT (AIA)

CHALLENGING THE VALIDITY OF A U.S. PATENT UNDER THE AMERICA INVENTS ACT (AIA) Dilworth & Barrese, LLP Woodbury, NY CHALLENGING THE VALIDITY OF A U.S. PATENT UNDER THE AMERICA INVENTS ACT (AIA) SOME COMPARISONS AND OPTIONS FOR PROSPECTIVE CHALLENGERS AND PATENT OWNERS AIA - America

More information

Terminating Inter Partes Review Proceedings Before the Patent Trial and Appeal Board

Terminating Inter Partes Review Proceedings Before the Patent Trial and Appeal Board Terminating Inter Partes Review Proceedings Before the Patent Trial and Appeal Board Eldora L. Ellison, Ph.D. Dennies Varughese, Pharm. D. Trey Powers, Ph.D. I. Introduction Among the myriad changes precipitated

More information

PATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No.

PATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No. Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 82 PTCJ 789, 10/07/2011. Copyright 2011 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com PATENT REFORM

More information

Session 1A: Preparing an IPR Petition Tips from a Petitioner Perspective

Session 1A: Preparing an IPR Petition Tips from a Petitioner Perspective 2014 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800, Chicago,

More information

Correction of Patents

Correction of Patents Correction of Patents Seema Mehta Kelly McKinney November 9, 2011 Overview: Three Options Certificate of Correction Reissue Reexamination in view of the America Invents Act (AIA) Certificate of Correction

More information