Monthly Archives: March 2016

The New PTAB Trial Rules are Here


Just announced today — the amended PTAB Rules of trial practice (click for a copy) will be published in the Federal Register on April 1, 2016 and take effect at the end of the month.

Changes include

From the summary: “This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR,… More

CAFC Debates a Change in the Venue Standard

AIA trial proceedings, such as IPR’s, provide alternatives to traditional patent litigation, as Scott Kamholz and I discussed in our article “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” (recently published in The New York Law Journal).  When considering an IPR and/or traditional litigation, factors such as cost, speed and convenience must be considered.  On March 11, 2016, the Federal Circuit took up the venue standard in patent litigation —… More

We Never Make Misteaks

The PTAB does sometimes make mistakes and isn’t shy about owning up to them. As long as a rehearing request identifies a dispositive misunderstanding or omission by the Board, it stands a good chance of success.

Boston Scientific Corp. v. UAB (IPR2015-00918, Paper 14) is a case in point. The Petitioner had argued that the patent was vulnerable to intervening art due to an invalid priority claim.… More

A 325(d) Denial on New Art: What the What?

iStock_000024744727_SmallSo a Petitioner files an IPR with new art combinations that weren’t considered during prosecution, including some new references that weren’t applied by the Examiner.  Sounds like a good start to a Petition, right?  Think again.  A recent IPR got denied under 35 U.S.C. § 325(d) for doing that.

Now stop and let that sink in.  An IPR was denied under 325(d) despite citing new art and combinations.… More