Patent Post Grant Proceedings

In the late 1990s, the Federal Circuit approved the patenting of software and business methods. A decade later, many believed that these types of patents were generally poor, and were hindering rather than helping innovation. In addition, the rise of non-practicing-entity lawsuits--pejoratively known as "patent troll" suits--spurred mega-corporations to heavily lobby congress for patent reform. While the Supreme Court acted to fix the problems with a string of decisions (including EBay Inc. v. MercExchange; KSR v. Teleflex; Octane Fitness v. ICON Health & Fitness; and Alice Corp. v. CLS Bank Int'l), there was no guarantee these changes would be effective and certainly would not wholly remedy the large number of problematic patents that were "in the wild." Therefore, circa 2011, Congress created several post-grant proceedings ("PGPs") with the American Invents Act ("AIA"). The PGPs are designed to make it easier and quicker for persons to petition the Patent Office to reconsider already-issued patents. The AIA also implemented a European-style post-grant opposition to allow competitors and other interested parties to challenge newly-issued patents immediately and without litigation. "Patent Office Post Grant Proceedings" is the culmination of hundreds of hours of analysis and curation of Patent Trial and Appeal Board ("PTAB") written opinions issued since the body came into existence with the AIA. In this text, the author synthesizes and organizes the important decisions with the disparate statutes, rules, commentary, and legislative history. The result is a comprehensive and authoritative text that will be informative and useful for intellectual property attorneys who are seeking an introduction to the relatively new AIA proceedings and as a handy desk reference for the PTAB-veteran practitioner alike. The third edition of this book updates the substantive changes in the law, especially due to SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which found that the Board no longer has the discretion to institute only on a subset of claims challenged by a petitioner; addresses additional topics, such as e-discovery; includes subject matter, case, statute and rule indexes for faster identification of relevant material; includes reproductions of the PTAB's default protective order for non-derivation proceedings, derivation proceeding standing protective order, standing order regarding e-discovery, and testimony guidelines as appendixes for easy review and reference; and contemplates that the book will be printed in gray scale rather than color, supplementing color-coding with pattern markers.