Posts in Post Grant Procedures


Studying IPRs Not Enough, PTAB must be Repaired, Replaced or Repealed by Congress

Inter Partes Review (IPR) is viewed by many as late-stage destruction of fully developed early-stage investor ROI in patented property. The Lee study will presumably weigh the …
By Chris Gallagher
10 days ago 23

How to improve IPRs without tossing the baby out with the bath water

It is clear that the current regulations are almost exclusively focused § 316(b)’s “the ability of the Office to timely complete proceedings” and not the other language …
By Russell Slifer
18 days ago 61

Michelle Lee launches PTAB initiative to ‘shape and improve’ IPR proceedings

The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com, Commerce …
By Gene Quinn
19 days ago 13

How IPR Gang Tackling Distorts PTAB Statistics

If you are having trouble figuring out how Zond could have had 371 claims, lost all of them, but only 1,220 claims were instituted out of 1,377 claims challenged, you …
By Peter Harter & Gene Quinn
24 days ago 5

Federal Circuit OKs PTAB invalidating patent claims prior litigation confirmed as valid

Patent claims being adjudicated valid in federal district court and then being killed in an administrative proceeding at the PTAB is exactly the problem so many of …
By Gene Quinn
25 days ago 23

How is the PTAB Handling Remands from the Federal Circuit? A Survey and Some Practical Takeaways

As of March 17, 2017, the Federal Circuit has remanded 23 post-grant proceedings back to the Patent Trial and Appeal Board (PTAB) for further consideration. But there are no rules …

Federal Circuit reverses PTAB anticipation holding because not every element present in prior art

The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of …
By Gene Quinn
1 month ago 8

Time to Quiet Title for Patents: Fixing the PTAB by Recognizing Patents are Property

While there are many fixes that need to happen to bring about even a modicum of fairness and justice to the PTAB processes, the most important fix …
By Gene Quinn
1 month ago 40

UFRF’s win on Eleventh Amendment at PTAB creates IPR immunity for public universities

Each of the Covidien IPRs challenged the validity of a single patent owned by the University of Florida Research Foundation (UFRF) which the university had previously asserted …
By Steve Brachmann
1 month ago 6

CAFC sides with L.A. Biomedical Research over Eli Lilly in two IPRs challenging penile fibrosis patent

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes …

Federal Circuit reverses PTAB, says CBM patents must be financial in nature according to the claims

The CBM determination includes patents that are “financial in nature” according to the claims; not patents that are “complementary” or “incidental” to financial activity according to the …

SCOTUS invites Michelle Lee to Respond to Oil States IPR related petition for certiorari

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the …
By Gene Quinn
2 months ago 15

The PTAB is a thoroughly broken tribunal incapable of being fixed

One Administrative Patent Judge — Judge Meredith Petravick — dissented. Petravick said it was inappropriate for the PTAB to terminate the '304 patent CBM because the parties were different …
By Gene Quinn
2 months ago 35

Patent owners do not like IPRs despite what Bloomberg Law, AIPLA study says

According to Bloomberg and AIPLA, the survey suggests that complaints from patent owners and other stakeholders in the U.S. patent system surrounding high patent invalidation rates …
By Gene Quinn & Steve Brachmann
3 months ago 31

Michelle Lee’s views on patent quality out of touch with reality facing patent applicants

In the piece, Lee tries her best to assure readers that positive developments have been made at the USPTO in recent years, but at multiple points she …
By Gene Quinn & Steve Brachmann
3 months ago 40