Alert

Recommended Alerts

Sign Up For Alerts

Patent/PTAB Litigation Changes in Senator Leahy’s “Restoring the America Invents Act”

In 2011, Congress passed the Leahy-Smith America Invents Act (the “AIA”), implementing the most significant reformation to the U.S. patent system in over fifty years. Among the many changes of the AIA was the creation of the Patent Trial and Appeal Board (the “PTAB”). The PTAB serves as the judicial body of the United States Patent and Trademark Office (the “USPTO”) that adjudicates AIA trial proceedings of challenged patents. A decade later, one of the AIA’s namesakes, Senator Patrick Leahy – VT (D), is seeking to recalibrate practices that have evolved due to recent court decisions and PTAB directives that he sees as contrary to goals of the original AIA legislation. As such, Senator Leahy has introduced a new bill entitled the “Restoring the America Invents Act.”

Read More

The Federal Circuit Reverses Long Standing PTAB Precedent on the IPR Time Bar Exception

Practices: Intellectual Property Litigation, Patent Trial & Appeal Board (PTAB) Proceedings

Printer-Friendly Version

On August 16, 2018, the Federal Circuit overruled the Patent Trial and Appeal Board’s (“PTAB”) long-standing practice of accepting certain inter partes review (“IPR”) petitions outside of the one-year time bar window prescribed by Section 315(b) of Title 35. The PTAB has consistently held that, where the underlying district court action was dismissed without prejudice, service of the complaint does not trigger the one-year time bar. The Federal Circuit in Click-to-Call Techs., LP v. Ingenio, Inc. (opinion here) reversed and found that service of the complaint does trigger the one-year time bar, even if the action is later dismissed voluntarily without prejudice. Petitioners now have one year to file IPR petitions even if the underlying district court action is eventually voluntarily dismissed without prejudice.

We will continue to monitor further developments regarding the impact of these decisions. If you have any questions about this Alert, please contact Scott McKeown.

Printer-Friendly Version

Cookie Settings