Tag Archive: post grant review

Mar 04

Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR

With the new Congress firmly seated and various legislative efforts gaining momentum, another effort to reform patent system is taking its share of the spotlight. In early February, the House of Representatives took the first step with Rep. Bob Goodlatte re-introducing the Innovation Act, the identical patent-reform legislation that overwhelmingly passed the House in 2013. Not …

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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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Sep 03

Second Petition Seeking Post Grant Review is Filed

Finally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review Petition. Accord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010.  Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure …

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Aug 12

First Petition for Post Grant Review Filed

At long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008.  The popular “Rainbow Loom” is the commercial embodiment of the patent claims at issue. The patent at issue is, of course, a “first to file,” post-AIA …

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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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Nov 20

GAO Report: Looking for the Real Troll

We now are able to share a full version of our article “GAO Report: Looking for the Real Troll” that published in Intellectual Property Magazine earlier this month. You might be surprised by the conclusions rendered by the General Accounting Office in its Report on Non-Practicing Entities.  To read the article, click HERE.

Nov 06

GAO Report: Looking for the Real Troll

Below is the introduction to my article, entitled “GAO Report: Looking for the Real Troll,” that published in Intellectual Property Magazine on October 29, 2013.  The full article can be found HERE As a tidal wave of attention and criticism, from legislative, judicial, and national press sources, continued to be heaped on ‘non-practicing entities’ (NPEs), the Government …

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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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Jan 25

PTAB Handles First Inter Partes Review “Initial Conference Call”

On Tuesday, January 22, 2013, the PTAB held its first “Initial Conference Call” in an inter partes review, in the case of Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Harness Dickey represents the Patent Owner, Proxyconn, in this matter).  The format of the call was very similar to a Rule 16 Conference before a federal district …

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Jan 11

Multiple Back-Up Counsel Allowed in Inter Partes Review

Despite the wording of 37 CFR § 42.10, as well as the accompanying comments thereto, that seem to limit parties to a single back-up counsel, the PTAB has recently granted concurrent pro hac vice motions that allow a patent owner to have two back-up counsel participate in a single Inter Partes Review proceeding.  It remains to …

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