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On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics.  First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate…

On October 1, 2019, in Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019), the Federal Circuit held that the Patent Trial and Appeal Board (“the Board”) abused its discretion by requiring Honeywell Int’l Inc. (“Honeywell”) to show that the requirements of 35 U.S.C. § 255 were met before…

On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]

Specifically, the Federal Register…

The Supreme Court of the United States issued a ruling today in Return Mail, Inc. v. Postal Service, 587 U.S. ___ (2019), holding that the United States Government is not a “person” eligible to petition for covered-business-method (“CBM”) review, inter partes review (“IPR”), or post-grant review (“PGR”) America Invents Act (“AIA”) proceedings before the…

On April 16, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated three orders as precedential related to the issue of the incomplete disclosure of “real parties-in-interest” (“RPIs”) at the time of the filing of petitions for post-grant proceedings.  These three relatively recent orders—all issued since January 2019—present a range of…

On October 11, 2018, the United States Patent and Trademark Office (USPTO) announced a change in the claim construction standard used for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review.  For these proceedings, the claim construction standard will be changed from the broadest reasonable interpretation (BRI) standard to the standard…

Since the Federal Circuit’s October 5, 2017 decision in Amgen Inc. v. Sanofi[1] overruling the so-called “newly characterized antigen” test for written description under 35 U.S.C. 112, patent challengers in the pharmaceutical and biotechnology fields have gained powerful tools for attacking antibody claims for lack of adequate written description.  More broadly, patent challengers are…

On Friday, January 19, 2018, in a Federal Register notice, the USPTO identified four regulations that it is proposing to abolish.[1] The proposals comply with Executive Order 13777, signed by President Trump in February of 2017, which require federal agencies to review all existing regulations and identify those that should be repealed, replaced, or…

Post-grant review (PGR) is the least common post-issuance trial proceeding before the Patent Trial and Appeal Board (PTAB). Only 1% of petitions filed for post-issuance trial proceedings since the institution of the America Invents Act have been for PGRs, while 92% and 7% have been for inter partes review (IPR) and covered business method (CBM)…

In an effort to combat pharmaceutical patent holders, several companies are now filing petitions for post-grant review on the theory that the claims are unpatentable for lacking sufficient written description and enablement. Although the number of post-grant review proceedings remains fairly small in comparison to inter-partes review proceedings, the recent increase in filings by generic…