PTABWatch Blog

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.

Recent Blog Posts

  • Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial proceedings at the PTAB.  Enactment of this Act would severely diminish the usefulness of AIA proceedings.  A goal of the Act is to reduce or eliminate... More
  • Sovereign Immunity Protects State University Owned Patent from Inter Partes Review The Patent and Trial Appeal Board dismissed petitions for inter partes review challenging the claims of a patent owned by a state university that had neither waived the protections offered it by the Eleventh Amendment nor consented to the trial.  Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, -01275, -01276 (PTAB Jan. 25, 2017).  Covidien LP filed three IPR petitions seeking review of U.S. Patent No. 7,062,251, which is owned by the University of Florida Research Foundation, Inc.... More
  • Guidance on Requesting Motions for Sanctions On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the PTAB allow the Board to impose an appropriate sanction on any attorney, registered practitioner or party that violates the PTAB’s rules after the offending party has... More
  • No Written Description, No Problem when Prosecution History Disclaimer is Applied The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments that the claims as construed were not adequately described in the specification. The Board noted that it was not proper for it to consider whether... More
  • Status Report on IPR Statistics for the Biotech/Pharma Technology Center On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided a status report on Inter Partes Review/Post Grant Review in the Biotechnology and Chemical Technology Center 1600 during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The statistics discussed during this BCP Conference are current as of May 31, 2016.  Since the first AIA petition filed in September 16, 2012, 5026 total AIA petitions have been filed, with 90% of these petitions being IPRs, 9% being CBMs and the rest being PGRs and... More
  • An Overview of Amendments to the PTAB Rules On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided an overview of the new PTAB rules during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which we have previously discussed [April 21, 2016 and August 20, 2015] was published on April 1, 2016, and was later revised in a correction to the final rule on April 27, 2016.  APJ Bonilla commented on... More
  • Rare Grant of Rehearing of Denial of Petition for Inter Partes Review The Board initially denied institution of Mylan Pharmaceuticals’ petition for inter partes review of U.S. Patent No. RE44,186, owned by AstraZeneca.  After a rare grant of Mylan’s request for rehearing, the Board reconsidered the record and decided to institute the IPR.  The decision to institute focused on the content of Mylan’s expert testimony; and although not mentioned in the decision, the replacement of one APJ in the PTAB panel for the decision on rehearing might have played a role in... More
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