Stranger in a Strange Land – USPTO Clarifies Rules for Pro Hac Vice Admission

By Ben Snitkoff The new Inter Partes Review (“IPR”) and Post-Grant Review (“PGR”)  procedures are similar to district court litigation in many respects: there are opportunities for discovery, depositions, adverse motion practice, and a trial. As such, many participants in these proceedings may wish to retain experienced litigation counsel, who may not be registered to … Continue reading Stranger in a Strange Land – USPTO Clarifies Rules for Pro Hac Vice Admission

A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding

By Reza Mollaaghababa A patent owner in an inter-partes review (IPR) proceeding may amend a challenged patent if they satisfy a number of statutory requirements set forth by the AIA (America Invents Act) and the regulations promulgated by the USPTO.  In particular, the AIA states that “… the patent owner may file 1 motion to … Continue reading A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding

No Fishing Allowed – Limits on Discovery Before the PTAB

By Anthony Pisano The addition of discovery to review proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes review, and post-grant review, have opened up the doors to new kind of challenges before the PTO.  However, attempting to receive additional discovery beyond that required by the rules in proceedings before the … Continue reading No Fishing Allowed – Limits on Discovery Before the PTAB

The More the Merrier – Joinder under the AIA

By Ben Snitkoff Under the America Invents Act (AIA), parties to an Inter Partes Review (IPR) or Post Grant Review (PGR) may move to join pending IPR or PGR proceedings. See 37 C.F.R. § 42.122 (for IPR), and 37 C.F.R. § 42.222 (for PGR). The regulations provide, in part: (b) Request for joinder. Joinder may … Continue reading The More the Merrier – Joinder under the AIA