PTAB Trials

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The America Invents Act (AIA) created several proceedings for challenging patent validity at the U.S. Patent and Trademark Office. These proceedings, which are held before the Patent Trial and Appeal Board (PTAB), include inter partes review (IPR), post‑grant review (PGR), and the transitional program for covered business method patents (CBM).

MBHB attorneys are uniquely qualified to handle proceedings before the PTAB. Indeed, not only do our attorneys have extensive litigation experience and comprehensive knowledge of the underlying technologies, but we also interact with the U.S. Patent and Trademark Office on a daily basis. Moreover, we have decades of experience handling cases before the PTAB and its predecessor, the Board of Patent Appeals and Interferences. With this specialized blend of skills, we know exactly what it takes to represent clients in all aspects of PTAB proceedings— from pre-institution strategy through oral hearing (and beyond).

Our attorneys are also dedicated to monitoring the latest developments at the PTAB, which puts us in the best possible position to educate and advise our clients on this quick-paced alternative to district court patent litigation. The News & Events and Publications tabs contain presentations and articles we have authored on topics relating to PTAB litigations.

Please join our PTABTrials group on LinkedIn for the latest information on IPRs, PGRs, CBMs and CAFC appeals relating to these PTAB trial proceedings.

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Upcoming Events

May 9-11, 2017
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
May 16, 2017
May 17-18, 2017
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 24, 2017
MBHB Partner Kevin Noonan, Ph.D. Is the Featured Speaker

Past Event

April 18, 2017
MBHB Partner Joshua Rich Is the Featured Presenter
March 14, 2017
MBHB Partners Dr. Andrew Williams and James Lovsin Are the Featured Presenters
March 7, 2017
MBHB Partner Dr. Emily Miao is a Featured Presenter
March 7, 2017
MBHB Partner Dr. Andrew Williams Is Featured Presenter
February 22, 2017

Publications

March 21, 2017 (snippets Alert)
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580 U.S. __ (March 21, 2017). In the opinion by Justice Alito, the Supreme Court applied the rationale of its own prior decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), finding that the existence of a six-year statute of limitations in the Patent Act, 35 U.S.C. §286, precluded the application of laches. As such, “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.”
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
Winter 2017 (snippets)
Although the PTAB has instituted CBM trials for patents that do not facially qualify as business method patents, recent Federal Circuit decisions have required a more strict reading of the AIA statute in instituting CBM trials.
Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
Fall 2016 (snippets)
Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in particular, applying the two-step framework set forth in Mayo v. Prometheus and Alice with any consistency has proven difficult, as the lines between abstract and non-abstract ideas, between step one and step two of the framework, and between eligibility (§ 101) and patentability (§§ 102, 103, or 112) have grown fainter.
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