AIA Blogs

  • New Pilot Program Concerning Motions To Amend
    Monday, March 25, 2019

    On March 15, 2019, the USPTO published a final pilot program for motions to amend (MTA) in AIA trial proceedings in the Federal Register. 84 Fed. Reg. 9497-9507 (Mar. 15, 2019). This pilot program applies to all AIA trial proceedings instituted on or after March 15, 2019; and does not extend the statutory requirement that trials [...]

  • Federal Circuit Rules that Assignor Estoppel Does Not Apply to IPR Petitions
    Thursday, December 6, 2018

    Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 2017-1525 (Fed. Cir. Nov. 9, 2018) The Federal Circuit recently ruled that a petition for inter partes review is not barred by assignor estoppel when the petitioner is in privity with a co-inventor who had assigned his rights to the current patent owner. The court adopted [...]

  • Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings
    Thursday, November 1, 2018

    Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018) The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The [...]

  • PTAB Releases Revised AIA Trial Guide
    Tuesday, August 14, 2018

    The USPTO Patent Trial and Appeal Board has issued a revised AIA Trial Practice Guide, updating the original guide published in 2012. The revised TPG, which was published in the Federal Register on August 13, 2018, provides updated guidance on practice and procedure before the PTAB in inter partes review, post grant review, and covered [...]

  • Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings
    Monday, July 23, 2018

    Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings In a closely-watched case, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO’s Patent Trial and Appeal Board and held that tribal sovereign immunity does not apply to inter partes review proceedings under the America Invents [...]

  • PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues
    Tuesday, January 16, 2018

    The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, [...]

  • PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision
    Monday, December 4, 2017

    In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d [...]

  • Supreme Court to Review PTAB Practice of Reviewing Only Selected Challenged Claims
    Monday, June 5, 2017

    SAS Institute Inc. v. Lee, No. 16-969 (U.S. May 22, 2017). On May 22, 2017, the U.S. Supreme Court granted review in the first patent case accepted for the October 2017 term. The Court granted certiorari to review whether the Patent Trial and Appeal Board’s practice of determining the patentability of some, but not all, [...]

  • Federal Circuit Reverses PTAB, Reaffirms Requirement That Anticipating Reference Disclose Every Element of Claimed Invention
    Monday, March 20, 2017

    Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017). The Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision that a challenged claim in a patent relating to systems for controlling torque in electromagnetic motors was unpatentable due to anticipation. The petitioner, Zhongshan Broad Ocean [...]

  • Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business Method Review
    Tuesday, March 7, 2017

    A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the transitional program for covered business method (“CBM”) patents. The appeals court held that a CBM patent must “have a claim that [...]