By Tom Engellenner In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied, at least in part, on new evidence introduced by the petitioner in its reply brief. … Continue reading PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply
By Tom Engellenner Much has occurred during the first year after the America Invents Act (AIA) established several new procedures for the public to challenge issued patents and a new administrative court to hear these cases. Here are some observations on the first year of this evolving practice. 1. Many More IPR Petitions Have Been … Continue reading Lessons From The First Year Of Post Grant Proceedings In The U.S.
By Tom Engellenner The new AIA procedures for administratively challenging issued patents afford the parties an opportunity to present their cases at a “final oral hearing” before the three Administrative Patent Judge panel that will decide the case. This is true for inter partes review (IPR), covered business method (CBM) review and post grant review … Continue reading PTAB Nixes Presentation of Video-Recorded Testimony at Oral Hearing as New Evidence
By Kelly E. Rose As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery. Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory initial disclosures, (b) routine discovery and (c) additional discovery. Of particular interest is a subcategory … Continue reading What is Inconsistent Information and When Must Such Information be Disclosed?
by Tom Engellenner The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method … Continue reading PTAB Issues Guidelines on Foreign Language Testimony