Challenges in Amending Claims in an IPR: The Evolving Burden on a Patent Owner
Amending claims during an inter partes review (IPR) proceeding is not like amending claims during ex parte prosecution or a…
Evidentiary Thresholds for Establishing Prior Public Use in Post-Grant Proceedings
Petitioners in post-grant review (PGR) and covered business method (CBM) proceedings have a greater arsenal of prior art to develop…
Terminating a Post-Grant Proceeding By Settlement Before the Patent Trial and Appeal Board Has “Decided the Merits”
Voluntarily terminating a post-grant proceeding before the Patent Trial and Appeal Board (PTAB) prior to a final written decision may…
Having the Last Word: Exploring the Good Cause Standard for Permitting Replies to Patent Owner Preliminary Responses
During the institution phase of a post-grant proceeding, the patent owner has the option of filing a preliminary response to…
PTAB Estoppel: Recent Guidance on What Grounds of Challenge “Reasonably Could Have Been Raised” in an Earlier Proceeding
The scope of estoppel under the America Invents Act is becoming clearer in view of recent Federal Circuit and Patent…
Todd Walters Appointed Chair of AIPLA PTAB Trial Committee
The American Intellectual Property Law Association appointed Shareholder Todd Walters as Chair of the PTAB Trial Committee. Learn more about…
ABA Names Todd Walters Chair of USPTO Post Grant and Inter Partes Practice Committee in ABA’s Section of IP Law
Shareholder Todd Walters, Buchanan’s Patent Office Litigation Chair, was named Chair of the USPTO Post-Grant and Inter Partes Practice Committee…
Due Process in AIA Trials
In Cuozzo, the Supreme Court emphasized that it “do[es] not categorically preclude review of a final decision where a petition…
Four Things You Need to Know: Summary of the 2016 Amendments to Practice Before the PTAB
On April 1, 2016, the Patent Office announced several changes to practice before the Patent Trial and Appeal Board (“PTAB”). …
The Applicability of Estoppel Under the AIA to Grounds of Unpatentability Not Instituted for Trial
The America Invents Act (AIA) sets forth estoppel provisions which, under certain circumstances, preclude subsequent judicial and administrative review of…
Dear Sir, May I Reply? Sur-replies before the PTAB in Post-Grant Proceedings
Post-grant proceedings before the Patent Trial and Appeal Board (PTAB) are governed by specific rules that tightly regulate the timing…
35 U.S.C. § 325(d): Are Some Patent Office Errors More Correctable Than Others?
In MCM Portfolio LLC v. Hewlett-Packard Co., the Federal Circuit affirmed the constitutionality of inter partes review (IPR) proceedings. 812…
Navigating the PTAB’s Expectations Concerning the Contents of Expert Declarations and Corresponding Pleadings
It is common practice to submit expert declarations in support of pleadings filed in post-grant proceedings before the Patent Trial…
PTAB Precedential Decisions
The first petition for inter partes review (IPR) was filed on September 16, 2012. Garmin Int’l, Inc. v. Cuozzo Speed…
Demonstrating Public Accessibility of Printed Publications in Inter Partes Review Proceedings
Petitioners may rely on printed publications to challenge the patentability of claims in an inter partes review (IPR) proceeding. 35…
Managing IP Recognizes Buchanan as 2016 IP Stars
Managing Intellectual Property has recognized our IP attorneys as 2016 IP Stars …