Category Archives: PTAB Procedure

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 , , , , , , , , , , , , ,

USPTO Proposes Change In Claim Construction Standard For Post-Grant Proceedings

By Reza Mollaaghababa On May 9, 2018, U.S. Patent and Trademark Office (PTO) issued a notice of proposed rule for changing the standard for construing claims in unexpired patents in inter partes review (IPR), post-grant review (PGR), and transitional covered … Continue reading

Posted in BRI Standard, Broadest Reasonable Interpretation, Claim Construction, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure, USPTO | Tagged , , , , , , , , , , , ,

SAS Institute Decision Causes Turmoil At The PTAB

By Tom Engellenner The U.S. Supreme Court’s decision this week in SAS Institute v. Iancu has upended a major provision of the U.S. Patent and Trademark Office (PTO) regulations for inter partes and post grant review proceedings conducted by its … Continue reading

Posted in America Invents Act, Appeals, Court of Appeals Fed Circuit, Federal Circuit, Final PTAB Decision, Instittion Decision, Inter Partes Review, Post Grant Review, PTAB Procedure, Stays, Supreme Court, Trial Tactics, USPTO | Tagged , , , , , , , , , ,

CAFC Affirms PTAB’s Decision To Invalidate Cialis and Adcirca Patents

By Reza Mollaaghababa In a recent decision, the Court of Appeals for the Federal Circuit (CAFC) affirmed decisions in two inter-partes review (IPR) proceedings that patents owned by ICOS Corporation directed to tadalafil formulations (used in the erectile dysfunction drug, … Continue reading

Posted in Anticipation/Obvious, Court of Appeals Fed Circuit, Federal Circuit, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics, USPTO | Tagged , , , , , , , ,