Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based on prior art that was raised or could have been raised. See 37 CFR […]
In a recent Northern District of California case, the Court granted a restraining order requiring the defendant to dismiss a set of PTAB petitions. Dodocase VR, Inc. v. Merchsource, LLC, et al., No. 17-cv-07088-EDL (N.D. Cal.). The defendant previously licensed the challenged patents, and the license agreement contained a no-challenge provision and a forum selection […]
The U.S. District Court for the District of Massachusetts recently found  that the scope of inter partes review estoppel was limited to only those grounds specifically instituted in an IPR proceeding, applying the standard set forth by the Federal Circuit in Shaw . Following a final written decision invalidating some, but not all, asserted […]
The Patent Trial and Appeal Board has issued its Guidance on Motions to Amend in view of the Federal Circuit’s long-awaited Aqua Products decision. In that splintered ruling, the Federal Circuit addressed the burden of proof as to the patentability of substitute claims presented by a patent owner in a motion to amend during inter […]
The Supreme Court held oral argument Monday, November 27, in the case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al. to address the question of whether inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) violate the Constitution. Justice Ginsburg lead the discussion by observing “there […]
The Patent Trial and Appeal Board (“PTAB”) recently issued a Standard Operating Procedure (“SOP”) for remands from the Federal Circuit. Remands of America Invents Act trials (IPR, CBM, and PGR) and ex parte and reexamination appeals are all included within the scope of the procedures. The SOP establishes a goal of issuing decisions on remanded […]
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Our goal is to keep our clients up to date on the latest practice tips. Since its enactment in 2011, the American Invents Act and its implications have changed for practitioners and set up new challenges. Click below for our latest post-grant proceedings practice tips and resources.