Tag Archives: AIA

IPR Statistics Suggest an Interesting Recent Trend

By Stephen C. Hall

Inter Partes Review (“IPR”) is a trial proceeding established by the America Invents Act that started in September 2012. Conducted before the Patent Trial and Appeals Board (“Board”), IPR allows an interested party to challenge claims in a patent for obviousness or lack of novelty, based on prior art patents or printed publications. Generally, IPR involves two steps: (a) filing a petition, which may (or may not) be followed by the patent owner’s response, and the Board rendering an “institution decision” within six months of petition; then (b) if the Board decides to institute IPR, it should in most cases enter its final determination within one year of institution. To institute an IPR (step “a” above), the Board must find that a reasonable likelihood exists that the petitioner would prevail with respect to at least one challenged claim.

Using IPR, petitioners have challenged thousands of claims contained in hundreds of issued patents. As discussed below, data existing on the USPTO website suggests a Continue reading IPR Statistics Suggest an Interesting Recent Trend

The Written Description Requirement: Genus/Species Claims (Part Three of Three)

By Stephen C. Hall

This is the third and final post of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

“Genus”: a class, kind, or group marked by a common characteristic(s)
“Species”: a logical subdivision of a genus marked by a specific attribute

gear to successTaxonomy (classifying things according to genus and species) also has a parallel in patent law. A patentee may use narrow species claims to distinguish against prior art, while at the same time seeking the broadest possible “right to exclude” with a genus claim(s). But there are trade-offs. First, the Patent Office can reject a broad genus claim if only one member of the genus was known in the art. Second, the patentee must provide a level of description proportional to the scope of the claim. In litigation, defendants accused of Continue reading The Written Description Requirement: Genus/Species Claims (Part Three of Three)

The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

By Stephen C. Hall

This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.iStock_000019576650Large

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then Continue reading The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)