Category Archives: Legislation

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Seeking Balance: A Review of the First 4 Years of the PTAB

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Looking back on the major developments that have shaped AIA proceedings over the first four years, three sources have contributed to changes: (1) rulemaking, (2) informative decisions by the PTAB, and (3) key appellate decisions of the US Supreme Court and the Court of Appeals for the Federal Circuit.  While a number of improvements have been … Continue reading this entry

DOJ Files IPR Petitions Against Discovery Patents

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The U.S. Department of Justice (DOJ) filed six petitions for inter partes review (IPR) of three patents assigned to Discovery Patents, LLC. The patents cover security alarm systems and methods for providing secure real-time video and imaging to emergency response agencies over a high speed communication link. The challenged patents are USPs 6,798,344, 6,778,085 and … Continue reading this entry

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

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A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16, 2012, to the post-grant review (PGR) process. By arguing that at least one claim is not entitled to the … Continue reading this entry

Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

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The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold back its best references for a subsequent attempt.  But what happens when the same petitioner files a new petition (after a first petition is denied) against … Continue reading this entry

Will New PTAB Rules Impact IPRs Filed By Kyle Bass Hedge Fund?

On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification” for all papers filed with the PTAB. Such a provision would provide for sanctions for noncompliant practitioners and parties … Continue reading this entry

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules changes on May 19th. The prior and newly proposed rule changes may impact proposed legislative changes being debated … Continue reading this entry