Posts Tagged: post grant procedures


Service Starts § 315(b) Time-Bar Even If Complaint Involuntarily Dismissed Without Prejudice

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. the Federal Circuit ruled the time-bar for filing a petition for inter partes review in Section 315(b) …

USPTO Substantially Revises PTAB Standard Operating Procedures

Earlier today the USPTO announced the substantial revision of Standard Operating Procedures (“SOPs”) for the paneling of matters before the PTAB (SOP1) and precedential and informative decisions (…
By Gene Quinn
26 days ago 13

IPR Petitioner Bears Burden of Demonstrating Real Parties in Interest are Listed and Petitions are Not Time-Barred

Though the Board did not specify which party bore the burden of demonstrating that all real parties in interest were identified in the petition, it appeared to …

Parlor Tricks and Shell Games: How the Invisible Hand of the PTAB Supports Challengers

After dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti. Perhaps there is an innocent explanation for what …
By Gene Quinn
2 months ago 79

Why should we encourage generics to challenge pharma patents?

What was the federal government thinking when Hatch-Waxman originally passed. Why would Congress incentivize generic manufacturers to challenge the patents of pharmaceutical companies? It is the same …
By Gene Quinn
4 months ago 1

Rethinking Article III Standing in IPR Appeals at the Federal Circuit

In 2011, as part of the American Invents Act (“AIA”), Congress significantly restructured the way in which previously issued patents could be challenged.   In some cases, existing post-issuance …

No blanket prohibition against the introduction of new evidence during an inter partes review

There is no blanket prohibition against the introduction of new evidence during an inter partes review proceeding, indeed new evidence should be expected. A petitioner can introduce …

Iancu: ‘It is unclear what is patentable and what is not, and that can depress innovation’

Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director …
By Gene Quinn
5 months ago 28

Written Description Support for Claimed Range Requires More than Broad Disclosure

Appellant General Hospital Corp. (“GHC”) appealed the Board’s dismissal of an interference because the claims of its involved patent application lacked sufficient written description. The disclosure …

CAFC Affirms Rejection of Application for Incorrect Inventorship

The Federal Circuit recently affirmed a decision of the United States Patent and Trademark Office to reject VerHoef's pending application 13/328,201 for a dog harness under pre-AIA Section 102(…

Inequitable Conduct Renders ’993 Patent Unenforceable

In Energy Heating v. Heat On-The-Fly, the court did not abuse its discretion in finding clear and convincing evidence that the inventor knew that the prior uses …

Jury Cannot Award Disgorgement of Profits in Trade Secret Misappropriation Cases

In Texas Advanced Optoelectronic Solutions v. Renesas Electrics, a jury found Renesas liable for both patent infringement and trade secret misappropriation. The jury awarded a reasonable royalty …

WesternGeco’s Time-Bar Argument Fails to Save its Invalidated Patents

On appeal, WesternGeco argued 1) the Board erred as to its unpatentability determinations; and 2) the IPR proceedings were time-barred under 35 U.S.C. § 315(b) because ION acted in …

Class Action Lawsuit Filed Against U.S. Government Alleging PTAB Violates Takings Clause and Due Process

On Wednesday, May 9th, Oklahoma-based patent owner Christy Inc. filed a class action complaint in the U.S. Court of Federal Claims against the United States seeking …
By Steve Brachmann
5 months ago 44

PTO Proposes Rulemaking to Implement Phillips Claim Construction at PTAB

Earlier today the USPTO announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (BRI) standard for construing unexpired and proposed amended …
By Gene Quinn
5 months ago 18

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