Tag Archive: america invents act

Dec 03

Inter Partes Review – A Fair and Efficient Litigation Alternative

With special thanks to my co-author, Laura Sheridan of Google, the linked article takes a detailed look at the first two years of inter partes review practice before the Patent Trial and Appeal Board and seeks to provide insights into some of the most critical areas of the proceedings. Like all change, the implementation of IPR has caused considerable …

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Dec 01

Patent Public Advisory Committee 2014 Annual Report

The Patent Public Advisory Committee issued its Annual Report regarding fiscal year 2014. The PPAC Report contains a number of interesting points, but our review, of course, will focus on the PTAB and post grant proceedings. The PPAC’s review of post grant proceedings started off with a review of numerous key statistics, including: The Board …

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Jul 02

Twenty-One Months of Inter Partes Review – By the Numbers

Welcome to Volume 6 of our IPR-PGR Quarterly Report.  This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions. Also, we are still waiting on our first PGR filing. First, after a brief respite last quarter, Petition filings rose …

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Dec 18

6 Reasons Inter Partes Review Was Popular in 2013

Originally Published in IP Law360 A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact.  While many predicted that Inter Partes Review (IPR) proceedings would change the face of patent litigation, few could have predicted the …

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May 15

35 for 37: Partial Victory for Patent Owner As Board Puts Some, But Not All, Claims into IPR Trial

In recent decisions, the Board has had a soft spot for Patent Owners.  Shortly after denying only the second petition for inter partes review, as previously discussed, only 29 of 40 challenged claims were put into an inter partes review trial in the case styled MicroStrategy, Inc. v. Zillow, Inc. (IPR2013-00034), involving US Pat. No. 7,970,674. The ‘674 patent …

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Apr 11

6 Months of Inter Partes Review – By the Numbers

Welcome to the inaugural issue of Harness Dickey’s Report on Litigation Practice Before the United States Patent Office.  Our periodic Report provides insight on some of the over 100 characteristics of Inter Partes Review and Post Grant Review proceedings that we track to identify trends and strategies for our clients. Are you facing threatened, pending, or anticipated patent …

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Mar 01

PTAB Refuses to Stay Inter Partes Review in View of Settlement Talks

The Patent Trial and Appeal Board spoke in unambiguous terms recently in deciding that it could not stay inter partes review proceedings, even if both parties agree, in view of the congressional mandate imposed upon the Board to complete IPR trials in a timely manner.  Anova Food, LLC v. Leo Sandau, et al. (IPR2013-00114). The …

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Feb 12

Another Motion to Stay Reexamination Granted in Inter Partes Review

One of the goals of this site is to provide a comprehensive, one-stop-shop, for all “inter partes review” Orders issued by the Board.  While the rationale for staying a pending reexamination in view of an IPR relating to the same patent has been covered in past posts (for example, HERE), for the sake of completeness, we …

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Feb 08

What is in your Inter Partes Review Claim Chart?

The claim chart has been a fixture of Patent Office post-grant practice, let alone federal court litigation, and inter partes review should be no different.  As has become a theme in inter partes practice, however, strict adherence to the Patent Office regulations is paramount in these proceedings, and the venerable claim chart has not avoided …

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Feb 07

The Mechanics of Motions to Amend in Inter Partes Review

As the first inter partes review trials head toward the deadline for a Patent Owner Response and potential Motion to Amend, the focus of the earliest trials is starting to turn to the mechanics of a Motion to Amend.  In addition to the Trial Practice Rules, the Board provided some guidance for motions to amend …

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