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News & Events


March 20, 2013

Post-Grant Alert: New PTO Fees Effective March 19, 2013

Updated March 22, 2013 – New PTO Fees Effective March 19, 2013, for Ex Parte Reexamination, Inter Partes Review, Post-Grant Review, and Covered Business Method Review

The alert below is updated from the March 20 release. Please note the updated IPR hypotheticals and updated fee structure for PGR/CBM.

March 18, 2013

USPTO Clarifies “Routine Discovery” Permitted in Patent Trials Before the PTAB

Written by: Karl Renner and Dorothy Whelan | March 18, 2013
Garmin International Inc. v. Cuozzo Speed Technologies LLC, slip op. IPR2012-00001 (PTAB Mar. 5, 2013)

In Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, the PTAB clarified the metes and bounds of “routine discovery” permitted in patent trials before the PTAB and set forth standards for determining when a party’s request for additional discovery would be granted.  The decision is important because it illustrates the limited nature of discovery available in patent trials and highlights the differences between PTAB and district court proceedings.

March 11, 2013

Patent Trial and Appeal Board’s Decision in Macauto U.S.A. Provides Clarity on Some Inter Partes Review Requirements

Macauto U.S.A. v. BOS GmbH & KG, slip op. IPR2012-00004 (PTAB Jan. 24, 2013)
March 11, 2013
Written by: Dorothy Whelan and Karl Renner

The PTAB’s decision in Macauto U.S.A. v. BOS GmbH & KG is significant for at least two reasons.  First, the PTAB clarified the eligibility requirements for inter partes review set forth in 35 U.S.C. § 315(b), holding that a suit filed by a patent owner against a petitioner and then dismissed voluntarily without prejudice did not trigger the one year time period for filing an inter partes review petition.  Second, the PTAB clarified the standards for satisfying the reasonable likelihood of success standard required for instituting an inter partes review.

March 7, 2013

USPTO declines petition for inter partes review – marking the first time since the proceeding has become available under AIA

Written by: Dorothy Whelan and Karl Renner
March 7, 2013
Synopsys, Inc. v. Mentor Graphics Corp., slip op. IPR2012-00041 (PTAB Feb. 2, 2013)

The PTAB’s decision in Synopsys, Inc. v. Mentor Graphics Corp. marks the first time that the PTAB has declined to adopt any of the grounds set forth in a petition for inter partes review.  The decision underscores the importance of preparing a robust petition that prospectively addresses key claim construction issues, provides a thorough analysis of the grounds for patentability, and includes the petitioner’s best available evidence supporting its positions.

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