Settlement of an IPR Proceeding Does Not Necessarily Stop Review the Patent

By Reza Mollaaghababa In an inter partes review (IPR) proceeding, a petitioner challenging a patent and the respective patent owner can reach a settlement and request that the Patent Trial and Appeal Board (PTAB) terminate the proceeding.  In particular, Section 317(a) of the America Invents Act (AIA) states that an IPR “… shall be terminated … Continue reading Settlement of an IPR Proceeding Does Not Necessarily Stop Review the Patent

PTAB Rejects Covered Business Method Claims

By Ben Snitkoff On January 21, 2014, the Patent Trial and Appeal Board issued its second Final Written Decision in a Covered Business Method (CBM) Proceeding under the America Invents Act. CBM Proceedings allow for the review of a business method patent on any ground of patentability, and fill a gap between Inter-Partes Review (IPR) … Continue reading PTAB Rejects Covered Business Method Claims

The Time Limit for Filing an IPR After Commencement of Patent Litigation Applies to Counterclaims

By Reza Mollaaghababa A petition for inter-partes review (IPR) will be time barred if it is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  35 U.S.C. §315(b).  In St. Jude Medical, Cardiology … Continue reading The Time Limit for Filing an IPR After Commencement of Patent Litigation Applies to Counterclaims

Lack of Speed Kills – The Dangers of Waiting in the PTAB

By Ben Snitkoff Since we last discussed joinder in inter partes review (IPR) proceedings, the Patent Trial and Appeals Board (PTAB) has released two interesting orders that expand the case law on the topic. In Fifth Third Bank v. Stambler, IPR2014-00244, Fifth Third Bank filed a petition for inter partes review, along with a motion … Continue reading Lack of Speed Kills – The Dangers of Waiting in the PTAB