Monthly Archives: June 2013

IPR and Stays of Co-Pending Litigation

By Lana Gladstein What are the odds of getting a stay of co-pending litigation after filing an inter partes review (“IPR”) involving all or some of the same patents?  The answer is not a simple one.  While there has been … Continue reading

Posted in America Invents Act, District Court, Inter Partes Review | Tagged , ,

Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

By Reza Mollaaghababa In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Estoppel, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics | Tagged , , , , , ,

To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response

By Tom Engellenner Once a petition for inter partes review is filed, the patent owner has 3 months under the PTO rules (Rule 42-107) to file an optional preliminary response –  before the PTAB decides whether or not to institute … Continue reading

Posted in America Invents Act, Inter Partes Review, PTAB Procedure, Uncategorized | Tagged , , , , , , , ,

What Not To Say in Your IPR Petition

By Tom Engellenner A review of recently issued PTAB decisions in which an Inter Partes Review (IPR) petition has been granted (i.e., orders initiating an IPR proceeding) confirms that the standard for granting a petition to review an issued patent … Continue reading

Posted in Uncategorized

Live by the Sword: Challenges to University-owned Patents

By Tom Engellenner To date, university-owned patents have been challenged in IPR proceedings only when the university has thrown the first punch.  Of the over 300 inter partes review petitions filed during the past nine months since this provision of … Continue reading

Posted in Inter Partes Review