Archives: Alerts

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 Okays PTAB Practice Of Reviewing Fewer Than All Challenged Claims In IPR

In a recent decision, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) acted properly in issuing a final decision as to some – but not all – claims challenged in an inter partes review proceeding under the America Invents Act. Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Fed. Cir. Feb. 10, 2016). As a […]

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 […]

PTAB Panel Allows Joinder Of Multiple IPR Proceedings Filed By Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(C)

An expanded panel of the USPTO Patent Trial and Appeal Board (“PTAB” or “Board”) recently exercised its discretion under 35 U.S.C. § 315(c) to grant a motion to join an inter partes review proceeding with an already-initiated proceeding filed by the same petitioner. This latest decision underscores the divide among PTAB panels concerning the procedural maneuver of joining serial IPR petitions. Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., Case No. IPR2015-00762 (PTAB Oct. […]

USPTO Proposes New Rules For PTAB Trial Proceedings

On August 19, 2015, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). The proposal responds to public comments submitted during 2014, and is in addition to the “quick fix” changes to the PTAB trial procedures announced by USPTO Director Michelle K. Lee on March 27, 2015. The Leahy-Smith America Invents Act (AIA) created new administrative proceedings permitting members […]

Federal Circuit Judges Disagree On Correct Claim Construction Standard For AIA Post-Grant Proceedings, But Decline En Banc Review

On June 8, 2015, the U.S. Court of Appeals for the Federal Circuit again considered one of the earliest final decisions from the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding under the Leahy-Smith America Invents Act of 2011 (“AIA”). In a set of revised opinions from the panel hearing the appeal, and three additional opinions debating the court’s denial of the patent owner’s petition for rehearing en […]