Author: Andrew Turner

Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings

Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018) The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The case raises interesting issues involving standing under the AIA and the limits of sovereign immunity. The petitioner, Return Mail, Inc., […]

PTAB Releases Revised AIA Trial Guide

The USPTO Patent Trial and Appeal Board has issued a revised AIA Trial Practice Guide, updating the original guide published in 2012. The revised TPG, which was published in the Federal Register on August 13, 2018, provides updated guidance on practice and procedure before the PTAB in inter partes review, post grant review, and covered business method matters. The updated TPG incorporates rule changes implemented by the PTAB since the original guide, which was written […]

PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues

The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The PTAB periodically designates one […]

In re Aqua Products, Inc.: Federal Circuit Continues To Uphold PTAB Limits on Motions To Amend

Although the America Invents Act permits patent owners to file motions to amend claims in a patent under review, see e.g., 35 U.S.C. § 316(d), patentees generally have been unsuccessful in seeking amendments. The USPTO has promulgated rules that place squarely on the patent owner the burden of demonstrating that proposed substitute claims are patentable over the known prior art. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027, Paper 26, 2013 WL 5947697 (PTAB June 11, […]