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News & Events


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.

October 11, 2012

Belkin v. Kappos (Fed. Cir. 2012) (Appeal of Inter Partes Reexam No. 95/001,089)

The Federal Circuit recently surprised many patent reexamination practitioners by holding in Belkin v. Kappos  that the Board of Patent Appeals and Interferences (“the Board”) lacked jurisdiction to consider claim rejections proposed by a reexamination Requester that were not adopted by the USPTO because they were deemed not to raise a substantial new question (“SNQ”) of patentability.

January 28, 2012

Preliminary Responses in Inter Partes Review and Post-Grant Review

Written by: Tracy Hitt, Karl Renner, Dorothy Whelan
Monday, January 28, 2013

Preliminary Responses in Inter Partes Review and Post-Grant Review The January 9, 2013, decision issued by the Patent Trials and Appeals Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001, provides insight into the reasons that the PTAB will consider in a patent owner’s preliminary response for purposes of determining whether to institute inter partes review (“IPR”), post-grant review (“PGR”), or covered business method (“CBM”) proceedings.

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