A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2)).

As predicted last week, the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday.

Phillips Claim Construction Rule Imminent

Some months back the Patent Trial & Appeal Board (PTAB) proposed dropping the broadest reasonable interpretation (BRI) in favor of the so-called "Phillips construction" of the courts.

The POP itself will include the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.

For these Patent Owners, the Board has provided some helpful guidance post Aqua Products.

Since the Federal Circuit's decision in Magnum Oil, the Patent Trial & Appeal Board (PTAB) has been mindful that the ultimate burden of persuasion must remain with the patent challenger.

With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors.

That is, the inquiry is fact-dependent, and not limited to one party controlling the other as some PTAB decisions seemed to suggest.

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that "the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . " ...

With the summer winding down, it is time to start looking forward to fall. September offers a number of great CLE options.

A constant criticism of the Patent Trial & Appeal Board (PTAB) has been the perceived difficulty in amending claims in an AIA trial proceeding.

Petitioners now have one year to file IPR petitions even if the underlying district court action is eventually voluntarily dismissed without prejudice.

As I predicted it would back in May, the Federal Circuit has now reversed the long-standing practice of the Patent Trial & Appeal Board to accept certain IPR petitions outside of the 1-year window of 35 U.S.C. § 315(b).

The U.S. Patent and Trademark Office has issued an update to its Trial Practice Guide. The update was published in the Federal Register today, August 13, 2018.