Tag: patent reform
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New PTAB Trial Practice Rules Effective May 2, 2016
On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. A small correction to these Amendments was published on April 27. I presented a summary of these rule changes at the AIPLA Spring Meeting in Minneapolis, MN on May 18, 2016. The…
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Federal Circuit Reinforces PTAB’s Authority to Institute Trial on Selected Claims in Synopsis v. Mentor Graphics Appeal
Newcomers to post-grant proceedings are often surprised by the PTAB’s claim-by-claim approach to patent challenges under the America Invents Act. When reporting statistics about IPRs, commentators tend to ignore these considerations: First, an IPR petition can be drafted to challenge all or some of the claims of a patent. So the set of challenged claims can be less…
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Federal Circuit Interprets Board’s Broadest Reasonable Interpretation Standard – Part II
In Microsoft Corp. v. ProxyConn, Inc. v. Michelle K. Lee, Intervenor (Fed. Cir. cases 2014-1542 and -1543), the Federal Circuit reversed claim constructions made by the Board in the underlying IPRs. One of the claim constructions that was reversed related to the interpretation of components of a packet-switched network. In particular, the claims recite a…
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Are Your Patent Procurement Guidelines Outdated?
I saw a bumper sticker that said: “Change is inevitable, but growth is optional.” This is true in many facets of life, and it is true for patent practice. The changes of the past few years are numerous and far-reaching. Is your patent portfolio strategy growing with these changes? One Simple Exercise If you are…
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Target Wins Rehearing of IPR Joinder Decision with Expanded Panel
Last fall, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to require joinder requests by a non-party to an ongoing proceeding. (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.) Prior to that decision, the Board had interpreted § 315(c) to allow for issue joinder by the petitioner of the original proceeding (see, for…
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Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel
October 17, 2014 Last month, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude joinder requests by an existing party to an ongoing proceeding. (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.) In these recent decisions, the Board decided that § 315(c) requires “party joinder” and…
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Lex Machina’s 2013 Patent Litigation Report Shows Disparity Between Litigated Patents and those under PTAB Review
Litigation and post-grant proceedings often go hand-in-hand. A new litigation report published by Lex Machina summarizes patent litigation data for 2013 and prior years. It is an interesting report and very easy to digest. Two findings caught my eye. The first one relates to the overall number of patent litigation cases filed in 2013: Plaintiffs filed 6,092…
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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…