Just because your issued patent was examined by the USPTO does not mean that it is free from challenge. Your competitors may, of course, scrutinize your patent and use IPR to challenge its validity—po...
You found a great prior art reference for your IPR petition. But if that reference isn’t a patent or patent application, you’ll need to think carefully about how to prove that the reference was actual...
In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would g...
In the 2017 precedential decision General Plastic Co. v. Canon Kabushiki Kaisha, the PTAB established a set of seven non-exclusive factors that it will consider in exercising its discretion under 35 U...
While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces...
This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. Th...
(as published by Bloomberg Law) Section 311(b) of the America Invents Act (“AIA”) provides that a petitioner for inter partes review (“IPR”) may request cancellation of one or more claims of a patent ...
One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope o...
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a December 2018 Response to USPTO Request for Comments on motion to ame...
(as published by Thomson Reuters Westlaw Journal IP) The U.S. Court of Appeals for the Federal Circuit held in a recent en banc decision that the one-year time limit that an accused infringer has to r...
Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 10...
A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the Ameri...