Pre-Trial Consolidation May Run Afoul of the America Invents Act

By | IP Litigation Current | January 12, 2015
Pre-Trial Consolidation May Run Afoul of the America Invents Act

The America Invents Act introduced a new statute, 35 U.S.C. § 299, which provides that “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.”

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AIA Post-Issuance Proceedings – Live Testimony Finds Its Way into Oral Argument for Inter Partes Review

By | IP Law Alert | June 11, 2014
AIA Post-Issuance Proceedings – Live Testimony Finds Its Way into Oral Argument for Inter Partes Review

In order to achieve the statutory requirement of rendering a final determination no later than one year following the institution of an Inter Partes Review (IPR), the Trial Practice Guidelines set forth by the U.S. Patent & Trademark Office “lay out a framework for conducting the proceedings aimed at streamlining and converging the issues for proceeding.”

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America Invents Act Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review

By | IP Law Alert | May 28, 2014
America Invents Act Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review

Prior to April 22, 2014, and since the filing of the first petition for inter partes review on September 16, 2012, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) had not granted any patent owner’s motion to amend claims of patents under review.

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America Invents Act Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

By | IP Law Alert | May 21, 2014
America Invents Act Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

In comparison to discovery obtainable in federal district court proceedings, discovery obtainable in inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) under the America Invents Act (AIA) is sharply limited

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