Filewrapper

PTAB’s Interpretation of 35 USC 315(b) Continues to Stand: Dismissal Without Prejudice Effectively Nullifies the One Year Bar to Bring an IPR

The USPTO’s Patent Trial and Appeal Board’s holding that the voluntary dismissal of a lawsuit, without prejudice, effectively nullifies the service of the complaint for purposes of triggering the one year bar in 35 U.S.C. § 315(b) to petition for the institution of an inter partes review (IPR) stands in Shaw Indus. Grp. v. Automated […]

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Federal Circuit Clarifies Rules for IPR Supplemental Information Submission

The America Invents Act (AIA) created a number of new pseudo-litigation proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  While the proceedings, including inter-partes review (IPR), have been in place since September 16, 2012, the specific rules and procedures, as well as the underlying authority, continue to be resolved.  On December […]

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Streamlined, Expedited Patent Appeal Program for Small Entities Announced by USPTO

As of September 18, 2015, small or micro entities with only a single ex parte appeal pending before the Patent Trial and Appeal Board (PTAB) will be able to expedite review of their appeal in exchange for streamlining the process. According to the information provided on the USPTO website, the criteria for qualification for this […]

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Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application

Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can […]

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New Changes Proposed for PTAB Trial Proceedings Rules

USPTO Director Michelle K. Lee discussed proposed rule changes in herblog post for Wednesday, August 19. The first set of rules governing inter partes review, post-grant review, and covered business method patent proceedings was issued in 2012 and a number public comment sessions were held to gather feedback on these rules. In March of 2015, […]

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The Continuing Saga of the First IPR at the Federal Circuit

    The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review (“IPR‚¬) . The order issued by the Federal Circuit is a denial of the Petition for En Banc Rehearing to consider […]

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USPTO Announces Expedited Patent Appeal Program

On June 15, 2015, the USPTO announced in a Federal Register Notice that they will be commencing the Expedited Patent Appeal Pilot Program. This initial program will be available until either 2,000 ex parte patent appeals are expedited under the program, or until June 20, 2016, whichever occurs first. Typically, appeals are taken up by […]

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Alternative Patent Reform Legislation Proposed in Senate

Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years. The most visible legislative efforts have involved the “Innovation Act” proposed by Senator Goodlatte in 2013, and again in 2015. The version of the Innovation Act introduced in 2013 stalled out […]

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Oral Arguments Held in Appeal of First IPR

By Jonathan Kennedy On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO. As noted in our previouspost, the appeal presents a number of interesting procedural and substantive issues. While the oral argument did not […]

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Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review

The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. […]

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