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 Patent Trial and Appeal Board (PTAB).  By concluding in a 5-4 decision that the agency … Continue reading SAS Institute Decision Causes Turmoil At The PTAB

Stanford Patent Found Invalid in IPR proceedings but Licensee’s IP Survives

By Tom Engellenner In a decision this month (IPR2013-00308), the Patent Trial and Appeal Board (PTAB) has ruled against Stanford University’s patented method for detecting Down’s syndrome and other chromosomal defects, finding all of the challenged claims 1-13 invalid. The Stanford patent, U.S. Patent Number 8,296,076, is licensed to Verinata Health Inc., and is the … Continue reading Stanford Patent Found Invalid in IPR proceedings but Licensee’s IP Survives

Lessons From The First Year Of Post Grant Proceedings In The U.S.

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.

Differing Approaches to Stays of Co-Pending Litigation

By Griffin Mesmer The United States Patent and Trademark Office (“PTO”) is quickly becoming a popular forum for parties who have been accused of patent infringement.  A defendant can challenge the validity of an asserted patent by filing a petition for inter partes review (“IPR”) with the PTO while the infringement suit is pending in … Continue reading Differing Approaches to Stays of Co-Pending Litigation

Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

By Ben Snitkoff The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal … Continue reading Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold