Author Archives: PostGrant-Counsel.com | Inter Partes Review, Reexam and other Challenges to Issued Patents

About PostGrant-Counsel.com | Inter Partes Review, Reexam and other Challenges to Issued Patents

Pepper Hamilton's blog all about challenging and defending patents after issuance: inter partes review, post grant review, reexams & foreign oppositions.

SUPREME COURT HOLDS THAT AIA ON-SALE BAR APPLIED TO SECRET SALES

By Reza Mollaaghababa In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Appeals, Court of Appeals Fed Circuit, Covered Business Methods, Federal Circuit, Inter Partes Review, Lack of Written Description, On-Sale BAR, One-year Statutory Bar, Patent Eligible Subject Matter, Post Grant Review, Printed Matter Doctrine, PTAB Procedure, PTAB Trial Practice Guide, Supreme Court, Trial Tactics, USPTO | Tagged , , , , , ,

YEAR IN REVIEW: CHANGES IN PTAB PRACTICE IN 2018

By Tom Engellenner A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law … Continue reading

Posted in Amendments before the PTAB, Broadest Reasonable Interpretation, Enlarged PTAB Panels, Inter Partes Review, Phillips standard, Post Grant Review, PTAB Procedure, PTAB Trial Practice Guide, Sovereign Immunity, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , ,

PTAB Abandons its Practice of Broadly Interpreting Claims of Challenged Patents in favor of Phillips Standard of “Ordinary and Customary Meaning”

By Tom Engellenner In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) … Continue reading

Posted in BRI Standard, Broadest Reasonable Interpretation, Claim Construction, Covered Business Methods, Inter Partes Review, Phillips standard, Post Grant Review, Trial Tactics, USPTO | Tagged , , , , , , , , , ,

Attorney General’s Office May Weigh In on Constitutionality of IPRs involving Pre-AIA Patents

By Tom Engellenner The 2011 America Invents Act (AIA) provided a variety of new ways to administratively challenge patents, including the now widely used inter partes review (“IPR”) procedure.  In two recent appeals of IPR decisions, Genentech has challenged the … Continue reading

Posted in Appeals, Attorney General, Constitutionality, Court of Appeals Fed Circuit, Federal Circuit, Fifth Amendment, Final PTAB Decision, Supreme Court, Takings Clause, USPTO | Tagged , , , , , , , , , , , , ,

CAFC Reverses PTAB on §315(b) Petition Time Bar Interpretation

By Reza Mollaaghababa Section 315(b) of the America Invents Act (AIA) provides that an inter partes review (IPR) proceeding “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which … Continue reading

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