On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”).
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.”
It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102.
In accordance with the statutory provisions of the America Invents Act, a patent owner may at his/her option file a preliminary response to a third-party petition requesting inter partes review (IPR) of a patent.
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.”
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.
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.
America Invents Act Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner in Attempt to Defeat “Synchronized” Decisions
The America Invents Act (AIA) of 2011 introduced a number of new inter partes procedures for post-issuance challenges of patents, including inter partes review (IPR) and a transitional program for covered business method patents (CBM).
The America Invents Act (“AIA”), which became fully effective on March 16, 2013, has fundamentally changed U.S. patent law. Some of the most important of these changes relate to the scope of prior art available under 35 U.S.C. § 102. The “prior art” is the body of earlier-disclosed information that can be cited against a patent application by the U.S. Patent and Trademark Office (“USPTO”).
The Federal Circuit recently confirmed that district courts must still exercise discretion in deciding motions to sever where the heightened joinder requirements of the AIA are satisfied.