Category: inter partes review
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See You at the AIPLA 2014 Spring Meeting!
I am presenting at the AIPLA Spring Meeting on May 15, 2014 in Philadelphia and hope to see you there. My task is to provide strategies for filing inter partes reviews, covered business method reviews and post-grant reviews. I hope to see you there! I just got back from the PLI Post-Grant Conference held in…
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Eastern District of Virginia Decides PTAB Decision to not institute IPR is Not Appealable
A patent owner insists that your company infringes a patent and makes a claim of patent infringement. You have settled patent infringement assertions before, but this patent seems invalid over known prior art. You consult with your patent counsel and a decision is made to file a petition for inter partes review (IPR) under the new post-grant…
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Join Me in San Francisco for PLI’s Post-Grant CLE Program on April 28
I will be presenting at PLI’s “USPTO Post-Grant Patent Trials 2014” CLE Program on April 28th with a number of other post-grant practitioners. Please join us there or attend via webinar! — Timothy Bianchi
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USPTO Statistics Show Inter Partes Patent Reviews are Frequently Settled Before Final Board Decision
The U.S. Patent Office regularly posts statistics on post-grant proceedings such as inter partes review and covered business method patent review. An excerpt of PTAB statistics for February 13, 2014 is found below. The acronyms “FWD” and “RAJ” stand for “Final Written Decision on the merits” and “Request for Adverse Judgment.” The “Other” category…
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Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies
A petition for covered business method review, inter partes review, or post-grant review may be filed on behalf of of several different parties and real parties in interest. Typically, such filings involve one, two, or three named persons (e.g., companies) as the petitioner. However, the Board’s rules do not state a limit on the number…
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Board Proposes Solution for Petitioner if Expert Witness Not Available for Deposition in Patent Office Trial
In current post-grant practice, most petitions are accompanied by an expert declaration to support the assertions made by the petitioner. If the petitioner successfully obtains institution of a patent office trial (inter partes review, covered business method patent review, or post-grant review), each declarant making a declaration for the petition must be made available for…
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Patent Office Board Takes a Bite out of Apple’s IPR Challenge of VirnetX Patents
In mid-2013 Apple filed seven inter partes review petitions to challenge four VirnetX patents. Recently, the Patent Trial and Appeal Board (the Board) denied all seven inter partes review (IPR) petitions. This outcome demonstrates the Board’s current interpretation of the one-year bar applied in IPR proceedings and its position on joinder of petitions. Apple’s Interpretation of the…
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Joint Motions to Terminate Patent Reviews Late in Trial Proceedings
One of the advantages of patent reviews under the America Invents Act is that the parties may settle before completion of the proceedings and file a joint motion to terminate these proceedings. The Patent Trial and Appeal Board (PTAB or Board) may consider the joint motion and terminate the entire proceeding. It has done so…