alert: Post-Grant Review

USPTO Adopts Federal Court Claim Construction Standard For All AIA Post Grant Proceedings

On October 11, 2018, the U.S. Patent and Trademark Office (“the Office”) published final rules changing the patent claim construction standard used by the Patent Trial and Appeal Board (“PTAB”) in AIA proceedings from the “broadest reasonable interpretation” (or “BRI”) standard to the “Phillips” claim construction standard currently used by the federal courts and International Trade Commission (“ITC”). See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In announcing the new […]

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to limit the ability of patent owners to amend claims during AIA post-grant proceedings. Background The Leahy-Smith America Invents Act (AIA) created three varieties of administrative proceedings allowing members of the public to challenge the patentability […]

Federal Circuit Rules That PTAB May Base AIA Trial Decision on Facts Outside Petition for Review

The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) invalidating two patents after an inter partes review proceeding, even though the decision partially rested on references and evidence not disclosed in the challenger’s petition for review or the PTAB’s decision to institute. The appeals court ruled that the PTAB’s use of evidence developed during the IPR trial was not a violation of […]

Supreme Court Affirms “Broadest Reasonable Interpretation” Claim Construction Standard and Limited Appeals For AIA Trials

On June 20, 2016, the U.S. Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Court affirmed the decision of the U.S. Court of Appeals for the Federal Circuit, holding that the USPTO acted within its authority in promulgating rules requiring the Patent Trial and Appeal Board to construe patent claims in inter partes review proceedings under the “broadest reasonable interpretation” (or “BRI”) standard. The Court also held that, with limited exceptions (e.g., […]

USPTO Issues Scaled-Down Revised Rules For PTAB Trials

On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at a tactical disadvantage. The new rules make some notable changes to some PTAB trial procedures, but not to other procedures criticized by some AIA trial […]

Federal Circuit Judges Voice Concern Over PTAB Practice Of Denying AIA Petitions Based On “Redundancy”

In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition, but contends that its decisions effectively are not subject to judicial review. Two Federal Circuit judges expressed concern that the practice may be unconstitutional and […]