Tagged: Patent Post-Issuance Procedures

AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

In comparison to discovery obtainable in federal district court proceedings, discovery obtainable in inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) under the America Invents Act (AIA) is sharply limited. Aside from “mandatory initial disclosures” agreed to by the parties and “routine discovery” largely limited to the cross-examination of experts, additional discovery must be requested by motion to the PTAB, with a showing that such discovery is required “in the interests of justice.” If the request is denied, the moving party can request the motion to be reheard by the PTAB by identifying all matters the party believes the Board misapprehended or overlooked.

AIA Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner In Attempt to Defeat “Synchronized” Decisions

The America Invents Act (AIA) of 2011 introduced a number of new inter partes procedures for post-issuance challenges of patents, including inter partes review (IPR) and a transitional program for covered business method patents (CBM). According to U.S. Patent & Trademark Office (PTO) statistics, nearly 1,200 petitions for IPR and CBM been have filed since September 16, 2012.