Monthly Archives: October 2013

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 … Continue reading

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

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.  … Continue reading

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

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, … Continue reading

Posted in America Invents Act, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics | Tagged , , , , , , , , , , , , ,

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. … Continue reading

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