Inter Partes Review
Inter Partes Review (IPR) is one type of post-grant proceeding available to challenge the claims of U.S. patents. Inter Partes Review is available for all patents during enforceability, regardless of priority date. A petition seeking Inter Partes Review can generally be filed at any time with a couple of exceptions. It must be filed before the petitioner seeks a declaratory judgment of invalidity in a civil action in district court and within one year of service of a complaint for infringement by the patent owner. Also, the PTAB’s decision may be appealed to the U.S. Court of Appeals for the Federal Circuit.
Inter Partes Review differs from Post-Grant Review and other post-grant proceedings in that:
- For first-inventor-to-file patents, the petition for Inter Partes Review cannot be filed while eligible for post-grant review (nine months after the grant of the patent) or during a post-grant review proceeding. For first-to-invent patents, the petition can be filed at any time during a patent's enforceability.
- The standard of review requires the petitioner to demonstrate a reasonable likelihood of prevailing on at least one patent claim.
- Discovery may be limited to depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in “the interest of justice,” including cited documentation, cross-examination, and information inconsistent with positions advanced during the Inter Partes Review proceeding.
- Grounds for the petitioner’s request to cancel one or more claims of a patent are restricted to prior art consisting of patents or printed publications, which can potentially limit the estoppel effect for the petitioner or patent owner.
Inter Partes Review Process:
Strategy & Foresight
Ford Motor Company v. Paice, LLC & Abell Foundation, Inc. (PTAB): Successfully represented Ford Motor Company as lead counsel before the Patent Trial and Appeal Board (PTAB) in a set of IPR petitions that were part of 25 inter partes review (IPR) proceedings related to hybrid technology. In total, the Brooks Kushman team challenged 325 claims across five patents; 274 of those claims were instituted. In decisions spanning from 2015-2017, the PTAB found 273 of the 274 instituted claims unpatentable. Brooks Kushman also represented Ford in follow-on litigation before the International Trade Commission, resulting in a favorable settlement.
JTEKT Corp. v. GKN Automotive Ltd (PTAB): Successfully defended patent owner GKN Automotive Ltd as lead counsel in an inter partes review proceeding filed by JTEKT, challenging claims in a patent related to drivelines switchable between a four-wheel mode and a two-wheel mode. The Patent Trial and Appeal Board found JTEKT failed to prove the obviousness of the claims and ruled the claims patentable. The Federal Circuit agreed and dismissed the appeal in a precedential opinion on standing. Case No. IPR2016-00046
Google LLC et al v. Seven Networks, LLC (PTAB): Successfully defended patent owner Seven Networks as lead counsel in three inter partes review proceedings related to a telecom patent for optimizing battery life, resulting in 100% of the inter partes review challenges being denied at the institution stage and leading to a favorable settlement on the heels of the institution decision. Case No. IPR2018-01102, IPR2018-01113, IPR2018-01114
Ex parte reexamination of Reexamination Control (CRU): Following the final written decision in IPR2015-01444 (affirmed by the Federal Circuit) holding all claims unpatentable, Sangeeta was retained to revive IXI’s enforcement strategy by filing a patent owner-initiated reexamination. Ultimately Brooks Kushman was able to secure 67 new, IPR-proof claims through the reexamination process. After the success of the first reexamination, two additional reexaminations were filed, securing over 100+ new claims for three different, asserted patents. No. 90013925, Ex. 1032,3 of U.S. Patent No. 7,039,033 (the ‘033 patent)
Apple, Inc v. IXI, LLC (PTAB): Successfully thwarted Apple’s attempt to seek trial on six IPR petitions that were time barred under 35 U.S.C. § 315(b), establishing that there was no basis for joinder and/or consolidation and further that a reexamination certificate does not create a new “patent” or affect the § 315(b)-time bar. Case No. IPR2019-00124, IPR2019-00125, IPR2019-00139, IPR2019-00140, IPR2019-00141, IPR2019-00181.
Frank A. Angileri
President
Michigan Office
Tel: (248) 226-2829
fangileri@brookskushman.com
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Erin K. Bowles
Patent Prosecution & Post-Grant Proceedings
Michigan Office
Tel: (248) 226-2703
ebowles@brookskushman.com
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John M. Halan
Patent & Trade Secret Litigation & Post-Grant Proceedings
Michigan Office
Tel: (248) 226-2735
jhalan@brookskushman.com
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John S. LeRoy
Co-Chair Litigation
Michigan Office
Tel: (248) 226-2754
jleroy@brookskushman.com
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Marc Lorelli
Co-Chair Litigation
Michigan Office
Tel: (248) 226-2949
mlorelli@brookskushman.com
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John E. Nemazi
Co-Chair Patent Prosecution
Michigan Office
Tel: (248) 226-2730
jnemazi@brookskushman.com
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John P. Rondini
Co-Chair Cybersecurity | Patent Litigation | Post-Grant Proceedings
Michigan Office
Tel: (248) 226-2913
jrondini@brookskushman.com
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Sangeeta G. Shah
Chief Executive Officer
Michigan Office
Tel: (248) 226-2740
sshah@brookskushman.com
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Sarah Silbert
Trademark Enforcement Litigation and Brand Protection Counseling
Tel:
ssilbert@BrooksKushman.com
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Christopher C. Smith
IP Litigation, Post-Grant Proceedings, Licensing, & Patentability Opinions
Michigan Office
Tel: (248) 226-2780
csmith@brookskushman.com
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Jeffrey M. Szuma
Electrical & Software Patent Prosecution, Post-Grant Proceedings, Patent Portfolio Management, & Opinions
Michigan Office
Tel: (248) 226-2746
jszuma@brookskushman.com
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Andrew B. Turner
Co-Chair Post-Grant Proceedings
Michigan Office
Tel: (248) 226-2707
aturner@brookskushman.com
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Michael D. Turner
Mechanical, Electromechanical & Design Patent Prosecution, Opinions, & Post-Grant Proceedings
Michigan Office
Tel: (248) 226-2825
mturner@brookskushman.com
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Brooks Kushman Shareholder Andrew Turner to Present at PTAB Bar Association Virtual Annual Conference
SOUTHFIELD, Mich. – Brooks Kushman shareholder Andrew Turner will be participating in a panel at the rescheduled PTAB Bar Association Annual Conference now slated for a virtual setting on September 24-25, 2020. The PTAB Bar Association’s Annual Conference brings together practitioners, in-house counsel, and members of the bench for a dynamic...
Brooks Kushman Hosts Chinese Delegation in Partnership With Michigan State University
SOUTHFIELD, Mich. – Brooks Kushman, in partnership with Michigan State University (MSU), hosted a Chinese Delegation for a roundtable discussion on Friday, September 7, 2018, in Southfield, Michigan. The roundtable focused on recent developments with U.S. patent challenges and trade secrets. It was moderated by Brooks Kushman shareholder Kristin L....
Federal Circuit Decision Upholds Validity of GKN Automotive Patent
Brooks Kushman serves as legal counsel to uphold critical claims in GKN Automotive’s patent Auburn Hills, MI (August 6, 2018) – The United States Court of Appeals for the Federal Circuit recently dismissed JTEKT’s challenges of GKN Automotive Ltd.’s patent claims in US 8,215,440, upholding the novelty and non-obviousness findings for...
Todd Dishman Appointed as 2018 Leadership Council on Legal Diversity Fellow; Isheeta Patel Appointed as an LCLD Pathfinder Participant
Southfield, Mich. – Brooks Kushman Shareholder Todd Dishman has been chosen to represent the firm as a member of the Leadership Council on Legal Diversity’s (LCLD) 2018 class of Fellows. This innovative program identifies, trains, and focuses on the development of the industry’s next generation of professional leaders. It also offers participants virtual and in-person...
Brooks Kushman Further Expands Los Angeles Office; Hires David A. Randall as Shareholder
LOS ANGELES, CA – Brooks Kushman is pleased to announce the addition of Shareholder David A. Randall to the firm’s Los Angeles office. The move further expands the firm’s presence in the greater Los Angeles area. Randall brings more than 20 years of experience to the firm’s Los Angeles office. His...
Brooks Kushman Hires Prominent IP Professional; Opens Washington D.C. Office
Southfield, Mich. – (October 12, 2016) – Brooks Kushman is pleased to announce the firm has expanded to Washington, D.C., opening its third office with the addition of Lissi Mojica. The new office is located within walking distance of the Unites States Patent and Trademark Office. The new office will be...
Brooks Kushman Ranked in Top 2015 PTAB Firms by Docket Navigator
SOUTHFIELD, Mich. — Brooks Kushman has been named one of the top Patent Trial and Appeal Board (PTAB) law firms in a 2015 annual report published by Docket Navigator. The list includes top law firms and corporate legal departments ranked by the number of inter partes review, covered business methods,...
Brooks Kushman Named One of the Most Active Firms at the PTAB During the First Half of 2015
Southfield, Mich. – Brooks Kushman was named as one of the most active firms in the Patent Trial and Appeal Board (PTAB) in a special report published by Managing IP during the first half of 2015. In addition to the firm’s listing, four of the firm’s attorneys were listed in...
Five Brooks Kushman Attorneys Recognized as 2016 Best Lawyers in America
Southfield, Mich. -Brooks Kushman President Mark Cantor, and Shareholders Frank Angileri, Marc Lorelli, John LeRoy and Elizabeth Janda have been selected for inclusion in the 22nd edition of The Best Lawyers in America. Brooks Kushman attorneys were recognized as 2016 Best Lawyers across a variety of intellectual property (IP) practice areas,...
Brooks Kushman Attorneys Named "IP Stars" by Managing IP
SOUTHFIELD, Mich. - Brooks Kushman is pleased to announce five of the firm’s shareholders have been named “IP Stars” by Managing Intellectual Property Magazine. This comprehensive guide to leading intellectual property (IP) firms and lawyers covers more than 80 countries. Brooks Kushman attorneys recognized as IP Stars by the publication are...
Brooks Kushman Shareholder Named Michigan IP Litigator of the Year by Managing IP
SOUTHFIELD, Mich.-Brooks Kushman is pleased to announce that Shareholder Frank Angileri was named Michigan’s IP Litigator of the Year by Managing Intellectual Property Magazine. The award is given each year during the publication’s North American Awards dinner.Angileri was also named in Managing IP’s “IP Stars” listing, a comprehensive guide to leading IP firms and...
Arthrex Oral Arguments Suggest SCOTUS is Not Ready to Dismantle the IPR System
The U.S. Supreme Court (SCOTUS) heard oral arguments in U.S. v. Arthrex, Inc. on March 1, 2021. SCOTUS granted certiorari on two questions raised by the Government, Smith & Nephew, and Arthrex: Whether, under the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, Administrative Patent Judges of the U.S....
New USPTO Proposed Rule Addresses All-or-Nothing AIA Reviews, Patent Owner Reply Briefs, and Testimonial Evidence Standards in IPR, PGR, and CBM Proceedings
Pursuant to a recent notice of proposed rulemaking, the U.S. Patent and Trademark Office (“USPTO”) seeks to amend the rules of practice for inter partes review, post-grant review, and the transitional program for covered business method patents proceedings that implemented provisions of the Leahy- Smith America Invents Act (‘‘AIA’’) before...
PTAB Designates Two New Precedential Decisions and One Informative Decision Regarding Discretion to Institute Inter Partes Review
The Patent Trial and Appeal Board (“PTAB”) recently designated two decisions as precedential, and one as informative, that concern its discretion to institute inter partes review. The decisions address issues related to: The non-exclusive factors that are considered by the PTAB under 35 U.S.C. § 325(d) when considering whether to institute...
USPTO Proposes New Procedures to Expand Availability of Claim Amendments During AIA Post Grant Proceedings
On October 29, 2018, the USPTO published a request for comments on proposed procedures designed to make it easier for patent owners to amend claims in challenged patents during inter partes review proceedings (IPR) and other AIA post grant trials. The Office stated that, “The goal of the proposed amendment...
Federal Circuit Clarifies IPR Procedures In Trio Of Cases
On August 16, 2018, the U.S. Court of Appeals for the Federal Circuit issued a spate of precedential decisions, including three clarifying procedures in inter partes review proceedings before the USPTO’s Patent Trial and Appeal Board. In two rulings, the Federal Circuit ruled that the one-year time bar for IPRs...
Federal Circuit Tackles Post-SAS Procedural Tangles – Rules That Patent Owner May Request Remand, Did Not Waive Challenge to Partial Final Written Decision
Polaris Industries, Inc. v. Arctic Cat, Inc., No. 2017-1870 (Fed. Cir. May 30, 2018)(nonprecedential). In the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 584 U.S. __, 138 S.Ct. 1348 (2018), ruling that 35 U.S.C. § 318(a) requires the PTAB’s final written decision (“FWD”) in an inter partes review...
Supreme Court Upholds Constitutionality of IPR Proceedings, But Strikes Down Partial PTAB Final Written Decisions
The U. S. Supreme Court issued rulings today in two cases involving inter partes review proceedings (“IPRs”) created by the Leahy-Smith America Invents Act (“AIA”). In the first case, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 (U.S. Apr. 24, 2018), the Court ruled in a...
PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination
The PTAB recently designated two decisions as informative that concern its discretion to deny institution of an IPR/CBM petition. Under 35 U.S.C. § 325(d), “In determining whether to institute or order a proceeding . . . the Director may take into account whether . . . the same or substantially...
Federal Circuit Rules that PTAB Rejection of IPR Time-Bar Defense is Reviewable
In an en banc decision, the U.S. Court of Appeals for the Federal Circuit ruled that the appeals court may review the Patent Trial and Appeal Board’s determination, in connection with a decision to institute inter partes review under 35 U.S.C. § 314, that a petition is not time-barred under...
New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously
The USPTO Patent Trial and Appeal Board recently designated three decisions as “informative” under the Board’s procedures. Informative decisions are not binding authority, but contain examples of PTAB norms on recurring issues, provide guidance on issues of first impression, or provide guidance on PTAB rules and practices. See PTAB Standard...
Federal Circuit Rejects Some USPTO Requirements for Amending Claims During IPR Proceedings
On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to amend claims during Inter Partes Review (IPR) proceedings under the America Invents...
PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings
General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) A familiar strategy in inter partes (“IPR”) review proceedings under the America Invents Act (“AIA”) is for petitioners to file multiple petitions challenging claims in an issued patent, including “follow-on” petitions filed after the initial petition for...
AIA Inter Partes Review Proceedings Challenged
In a somewhat surprising decision, the U.S. Supreme Court granted certiorari on June 12, 2017 to hear a challenge to the legality of inter partes review (IPR) proceedings implemented by the Leahy-Smith America Invents Act in 2012. The Court will hear argument on whether the IPR process violates a patent...
Supreme Court To Review PTAB Practice Of Reviewing
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...
Statements Made in IPR Preliminary Responses
Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017) In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create prosecution...
Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
In Cuozzo Speed Techs., LLC v. Lee,[1] the U.S. Supreme Court rejected the patent owner’s challenge to the U.S. Patent and Trademark Office’s implementation of the Leahy-Smith America Invents Act’s new post grant proceedings. The Court held that Cuozzo could not challenge the Patent Trial and Appeal Board’s decision to...
Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
In Cuozzo Speed Techs., LLC v. Lee,[1] the U.S. Supreme Court rejected the patent owner’s challenge to the U.S. Patent and Trademark Office’s implementation of the Leahy-Smith America Invents Act’s new post grant proceedings. The Court held that Cuozzo could not challenge the Patent Trial and Appeal Board’s decision to...
USPTO Issues Scaled-Down Revised Rules For PTAB Trials
On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at...
Federal Circuit Okays PTAB Practice of Reviewing Fewer Than All Challenged Claims in IPR
In a recent decision, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) acted properly in issuing a final decision as to some – but not all – claims challenged in...
Federal Circuit Judges Voice Concern Over PTAB Practice of Denying AIA Petitions Based on Redundancy
In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition,...
PTAB Panel Allows Joinder of Multiple IPR Proceedings Filed by Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(c)
An expanded panel of the USPTO Patent Trial and Appeal Board (“PTAB” or “Board”) recently exercised its discretion under 35 U.S.C. § 315(c) to grant a motion to join an inter partes review proceeding with an already-initiated proceeding filed by the same petitioner. This latest decision underscores the divide among...
USPTO Proposes New Rules For PTAB Trial Proceedings
On August 19, 2015, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). The proposal responds to public comments submitted during 2014, and is in addition to the “quick fix” changes to the PTAB...
Federal Circuit Judges Disagree On Correct Claim Construction Standard For AIA Post-Grant Proceedings, But Decline En Banc Review
On June 8, 2015, the U.S. Court of Appeals for the Federal Circuit again considered one of the earliest final decisions from the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding under the Leahy-Smith America Invents Act of 2011 (“AIA”). In a set...
Brooks Kushman Shareholder Discusses Federal Circuit Decision to Keep Standing Limits on PTAB Appeals Due to Auto Parts Co’s Bid to Review
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Linda Mettes was quoted in a Law360 January 16, 2019 article, “High Court Urged To Keep Standing Limits On PTAB Appeals.” Client GKN is the owner of U.S. Patent No. 8,215,440 B2 – which has now been twice reviewed by the U.S. Patent and Trademark Office including the inter partes review...
Brooks Kushman Shareholder Discusses Federal Circuit Decision to Deny an Auto Parts Co’s Bid to Invalidate Opponent's Patent
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Linda Mettes was quoted in a Law360 August 3, 2018 article, “Fed. Circ. Says Auto Parts Co. Lacks Standing In PTAB Appeal.” The article discusses the Federal Circuit’s decision to rule that JTEKT Corp., an auto parts maker, does not have standing to appeal a PTAB decision upholding part...
Sangeeta G. Shah Quoted in IAM Article on Potential Changes with the Patent Trail and Appeal Board
SOUTHFIELD, MI – Brooks Kushman Shareholder Sangeeta Shah was featured in IAM’s May 10, 2018 article, “Change in claim construction at PTAB may not have a big practical impact but its message is clear.” The article focuses on the recent changes on the Patent Trial and Appeal Board (PTAB) practices...
Brooks Kushman Shareholders mentioned in Law360
A Law360 article (“Ford wins PTAB challenge over hybrid vehicle tech”) on Ford Motor Company’s victory at the Patent Trial and Appeal Board (PTAB) featured Brooks Kushman Shareholders Frank Angileri, Sangeeta Shah, John Nemazi, John Rondini and Erin Bowles. The matter at stake was Ford Motor Company’s recent inter partes review...
Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews- Brooks Kushman
Brooks Kushman Shareholders Frank Angileri, John Nemazi, John Rondini and Christopher Smith were mentioned in Law360’s November 10, 2015 article, “Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews.”The article discusses the Brooks Kushman intellectual property litigation team’s recent successful request for four different inter partes reviews (IPR) of a...
Ford Wins Another PTAB Review Of Paice Hybrid Car Patent
Brooks Kushman Shareholders Frank Angileri, John Nemazi and John Rondini and Associate Michael MacCallum were mentioned in Law360’s November 2, 2015 article, “Ford Wins Another PTAB Review Of Paice Hybrid Car Patent.” The article discusses the Brooks Kushman intellectual property litigation team’s recent successful request for an inter partes review (IPR)...
Ford Nabs PTAB Review Of Paices Hybrid Car Patent - Brooks Kushman
Brooks Kushman Shareholder Frank Angileri was mentioned in Law360’s October 30, 2015 article, “Ford Nabs PTAB Review Of Paice’s Hybrid Car Patent.”The article discusses Angileri’s recent successful request for an inter partes review (IPR) of a hybrid vehicle patent owned by Paice LLC on behalf of Ford Motor Company. During...
Brooks Kushman IP Litigation team mentioned in Law360
Brooks Kushman Shareholders Frank Angileri, John Nemazi and John Rondini and Erin Bowles were mentioned in Law360’s September 29, 2015 article, “USPTO Rules For Ford In Dispute Over Hybrid Vehicle Tech.” The article discusses the Brooks Kushman intellectual property litigation team’s recent successful inter partes review (IPR) of two Paice LLC...
Brooks Kushman Shareholder Discusses AIA Appeals in Law360
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Sangeeta Shah was featured in Law360 July 11, 2015 article, “5 AIA appeals to watch at the Federal Circuit.”The article discusses appeals at the Federal Circuit related to the relatively new America Invents Act. In most cases, the Federal Circuit has largely backed decisions...
Brooks Kushman President Discusses Patent Litigation in Crains Detroit Business
SOUTHFIELD, Mich. – Brooks Kushman President Mark Cantor was featured in Crain’s Detroit Business’ June 20, 2015 article, “While IP-focused firms shed attorneys, general practice firms hold steady or beef up.”In the article, Cantor discusses the recent slowdown in patent litigation, stemming from recent U.S. Supreme Court rulings and legislation...
Brooks Kushman Shareholder Discusses Patent Trolls in Crain's Detroit Business
SOUTHFIELD, Mich., - Brooks Kushman Shareholder, Marc Lorelli, was featured in an article discussing patent troll litigation in the U.S. Patent and Trademark Office. In the article, “Patent Trolls Take Their Toll,” Lorelli discusses how the Leahy-Smith America Invents Act protects companies against patent trolls, as well as ways that patent...
Brooks Kushman Earns Gold Honors in Patent 1000 Listing
SOUTHFIELD, Mich. – Brooks Kushman, intellectual property and technology law firm, is now listed in Intellectual Asset Management`s (IAM) annual Patent 1000, a guide that recognizes the world`s top patent law firms and practitioners in key jurisdictions. The 2014 IAM Patent 1000 issue marks the first time any firms from...
Brooks Kushman Shareholder reviews the America Invents Act in Detroit Legal News
SOUTHFIELD, Mich. - In an article recently published by Detroit Legal News, Brooks Kushman Shareholder Sangeeta Shah discusses the Leahy-Smith America Invents Act (AIA), and its effects on post-grant proceedings.In the article “Asked & Answered: Sangeeta Shah on America Invents Act,” Shah reviews the ways that the AIA has changed...
Brooks Kushman Attorneys Discuss Ways to Minimize the Risk of Post-Grant Challenges in Law360 Article
SOUTHFIELD, Mich. – In an article recently published by Law360, Brooks Kushman Shareholders Sangeeta G. Shah and Michael D. Turner discuss the increasing need for proactive prosecution strategies as a result of the recent Idle Free decision.In the article “Ways to Minimize the Risk of Post-Grant Challenges,” Shah and Turner...
Cushion and Bowles Discuss Lessons Learned in the PTAB's Final Decision on Group of Inter Partes Review Trials
SOUTHFIELD, Mich. – In an article recently published by Law360, Brooks Kushman Shareholder Michael D. Cushion and Associate Erin K. Bowles discuss the insights gained from the Patent Trial and Appeal Board`s (PTAB) recent group of four final written decisions to inter partes review trial proceedings involving Intellectual Ventures Management,...
Brooks Kushman Shareholder Andrew Turner to Present at PTAB Bar Association Annual Conference
SOUTHFIELD, Mich. – Brooks Kushman shareholder Andrew Turner will be participating in a panel at the PTAB Bar Association Annual Conference in Washington, D.C. in March. The PTAB Bar Association’s Annual Conference brings together practitioners, in-house counsel, and members of the bench for a dynamic discussion of the Patent Trial Appeal...
Thomas Lewry and and Christopher Smith to Speak at Two Panels Focusing on Developments in Patents and Licensing
SOUTHFIELD, Mich. – Brooks Kushman shareholders Thomas Lewry and Christopher Smith are speaking at two panels hosted by the Association of Corporate Counsel (ACC) in Irvine, CA and Los Angeles, CA. Both panels are called hACCess: Essential Developments in Patents and Licensing. During the panels, Lewry and Smith will discuss the...
Brooks Kushman Shareholder to Speak on Panel at the Managing Intellectual Property PTAB Forum
SOUTHFIELD, Mich. – Managing Intellectual Property is hosting the Patent Trial and Appeal Board (PTAB) Forum 2018 in both Palo Alto and New York. The forum will discuss the impact that the America Invents Act (AIA) has had on the patent litigation landscape. Brooks Kushman shareholder Linda Mettes will be speaking on a panel...
Brooks Kushman Shareholders to Speak at the Best Practices in Intellectual Property Sixth Annual Conference
SOUTHFIELD, Mich. – Best Practices in Intellectual Property (BPIP) is hosting its sixth annual conference in Tel Aviv. The conference, IP Management: Today’s Global Issues, updates attendees on global IP issues, trends and legislation. It also demonstrates practical tools, methods and new ideas that can be applied to growing and strengthening a...
Brooks Kushman Principal Lissi Mojica To Speak at GW Law Conference Post-Grant Practice Roundtable Discussion
Washington D.C. – Brooks Kushman principal Lissi Mojica will participate in the third annual GW Law Conference Post-Grant Practice Roundtable Discussion on September 28, 2017 in Washington D.C. at The George Washington University Law School. The half-day program consists of patent leaders from academia, industry and government to provide attendees many...
Brooks Kushman Principal Lissi Mojica To Speak at CPTCLA Fall CLE Seminar
Washington D.C. – Brooks Kushman principal Lissi Mojica will be presenting at The Carolina Patent, Trademark & Copyright Law Association (CPTCLA) Fall CLE Seminar on September 22, 2017 in South Carolina at the Kiawah Island Golf Resort. Her presentation is titled, “Federal Circuit Decisions and How They Are Impacting the Policies...
Brooks Kushman Principal To Discuss the Evolution and Impact of PTAB Five Years Post-AIA
SOUTHFIELD, Mich. – Brooks Kushman Principal Lissi Mojica will serve on a panel during the Practising Law Institute’s 11th Annual Patent Law Institute, at the PLI New York Center in New York, New York on April 6, 2017. The program is designed to be of practice value for those in the patent law...
Principal Lissi Mojica to Speak at FCBA
WASHTINGTON, D.C. – Brooks Kushman Principal Lissi Mojica will speak at the Federal Circuit Bar Association’s (FCBA) regional meeting at the Rocky Mountain Regional US Patent and Trademark Office in Denver, Colorado on February 17, 2017. The program will focus on current topics related to patent litigation and the Courts...
Brooks Kushman Shareholder to Discuss IP Litigation at InsideCounsel SuperConference
SOUTHFIELD, Mich. - Brooks Kushman Shareholder Frank Angileri will speak to attendees of the 15th annual InsideCounsel SuperConference on May 13, 2015 in Chicago. This annual conference helps legal professionals of all levels become strategic partners within their organizations.Angileri will discuss strategies for businesses to prepare for intellectual property litigation that help reduce risks and gain proactive...
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at IP Strategy Summit
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Sangeeta Shah will serve on a panel at the Centerforce IP Strategy Summit in Chicago on May 12, 2015. The panel will focus on the proceedings for challenging patents created by the America Invents Act (AIA) and understanding how to best utilize the processes for effective defensive and enforcement strategies. Shah...
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at International Women`s Leadership Forum
SOUTHFIELD, Mich. – Brooks Kushman, Shareholder Sangeeta Shah will discuss post-grant proceedings at Managing IP`s International Women`s Leadership Forum on June 6, 2014 in New York. Shah`s presentation will focus on the new post-grant proceedings created under the 2013 America Invents Act. Shah will discuss the trends that she has seen...
Brooks Kushman Shareholder to Serve as Panelist at the Centerforce IP Strategy Summit
SOUTHFIELD, Mich. – Brooks Kushman Shareholder, Sangeeta G. Shah, will serve on a panel at the Centerforce IP Strategy Summit in Chicago on May 13, 2014. The panel will focus on the intricacies of post-grant proceedings and its use as a powerful tool in patent litigation strategy. Shah and the other...
Brooks Kushman Shareholder Marc Lorelli to Discuss American Invents Act Proceedings at the Toledo Intellectual Property Law Association Spring Seminar
SOUTHFIELD, Mich., - Brooks Kushman, P.C. Shareholder and Patent Attorney, Marc Lorelli will serve as one of three panelists at the Toledo Intellectual Property Law Association`s spring seminar on Tuesday, March 25, 2014. The seminar will provide an overview of post-grant patent proceedings under the new American Invents Act (AIA). Lorelli`s...
PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies
While 2020 was an impactful year for everyone, the Patent Trial and Appeal Board (PTAB) designated numerous decisions and implemented procedural changes that affect AIA Trial Practice. These new developments include: Rule Changes (Institution, Presumptions) and Clarification Memos (Applicant Admitted Prior Art) Discretionary Denials due to Prior Examination (Advanced Bionics) and Parallel...
PTAB Year in Review - Designated Decisions, Constitutional Challenges, and AIA Procedures
The Patent Trial and Appeal Board (PTAB) continued to have a meaningful impact on IP litigation in 2019 as the preferred venue for challenging validity. There were a number of significant developments at the PTAB in 2019 including: numerous designated decisions, Constitutional challenges, and several procedural updates that will affect...
PTAB Year in Review and Looking Forward - New Procedures Require Reassessment of AIA Trial Strategies
During 2018, Federal Circuit and Supreme Court rulings triggered important changes to IPR and other post grant proceedings before the Patent Trial and Appeal Board. In addition, the Board recently announced several new procedures that will affect AIA trial practice. These changes present new options for both petitioners and patent...
PTAB and IP Litigation 2017 Year in Review
2017 was another remarkable year for intellectual property disputes, including IP litigation and proceedings before the USPTO Patent Trial and Appeal Board. Landmark Supreme Court decisions and cases argued, but not yet decided, should cause parties in AIA post grant proceedings to reassess their strategies. In addition, the Federal Circuit’s...
Sovereign Immunity at the PTAB: Gimmick or Genius?
When drugmaker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan's move to sidestep an inter partes review at the PTAB by taking advantage of the Tribe's sovereign...
Quarterly Review - Intellectual Property Impact
At the end of each quarter, the speakers will review the appellate decisions during the quarter that will have the greatest impact on Intellectual Property law. Since the last quarterly webinar, the Supreme Court and Federal Circuit have issued several significant IP rulings, including decisions that will affect on-going discussions concerning...