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 some data suggesting that, purely statistically, the odds are in favor of getting a stay … Continue reading IPR and Stays of Co-Pending Litigation

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 invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to … Continue reading Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

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 proceedings.  Considering that the petitioner has typically spent many months preparing the petition, including preparing … Continue reading To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response

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 the AIA became effective in September 2012, only 9 of the petitions have challenged patents … Continue reading Live by the Sword: Challenges to University-owned Patents