Fish & Richardson - News and Events
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News & Events


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.

January 18, 2012

USPTO handles first case under Covered Business Method review procedure

Written by: John C. Phillips
January 18, 2013
SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001 (PTAB Jan. 9, 2013).

In the very first case brought under the U.S Patent and Trademark Office’s Covered Business Method (“CBM”) review procedure, the Patent Trial and Appeal Board (“PTAB”) provided invaluable guidance in its decision holding that a petition seeking CBM review of a patent[1] warranted institution of a CBM review proceeding.  Among other things, the PTAB signaled that it would interpret the requirements for instituting CBM review liberally, thereby enhancing the procedure’s potential value to defendants charged with infringing business method patents.