Finnegan Publishes the Advanced Technology Patent Report 2015

Author: Elliot C. Cook
Editor: C. Gregory Gramenopoulos

Finnegan’s Advanced Technology Patent Report 2015 is a comprehensive guide to significant developments in U.S. patent law and practice for the electrical and computer technology fields. It covers three main areas: patent prosecution, post-grant proceedings, and litigation. The report distills key precedents from the Supreme Court and Federal Circuit, and explains how they are driving changes at all levels of practice. Complementing its review of patent law developments, the report includes a collection of useful statistics, including those related to patent filings, grants by technology class, and district court litigation.  Some unique Patent Trial and Appeal Board (PTAB) statistics are also provided, including a breakdown on evidentiary sources relied on for claim construction.

Those involved in patent prosecution will be interested in the overviews of various U.S. Patent and Trademark Office (USPTO) pilot programs, such as Track One examination, the First Action Interview Pilot Program, and the After Final Consideration Pilot Program 2.0. Changes to prosecution rules and procedures created by the America Invents Act (AIA) are also discussed.

4.29.15-USPTO-Total-Track-One-Requests

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When Served is Not “Served”

Author: Rachel L. Emsley
Editor: Aaron J. Capron

The one-year rule, codified in 35 U.S.C. § 315(b), bars a party from filing an inter partes review (IPR) petition challenging the validity of a patent’s claims “more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” Patent Owners having brought a district court action against infringers start this one-year clock by serving the complaint, or by filing a notice of waiver with the court.

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Expanded PTAB Panel Interprets Joinder Provision of § 315(c) as Allowing Two Bites at the Apple

Author: Chetan R. Bansal
Editor: P. Andrew Riley

In Target Corp. v. Destination Maternity, a majority of a five judge panel (“Original Panel”) of the Patent Trial & Appeal Board held that (1) an IPR petitioner may not file a second petition and join with its own prior instituted IPR proceeding, and (2) § 315(c) only allows joinder of parties not “issues” (e.g., different prior art grounds for unpatentability, different challenged claims). IPR 2014-00508, Paper 18 at 3-11 (Sep. 25, 2014). On February 12, 2015, a 4-3 majority of an expanded seven-judge panel (“Expanded Panel”) reversed both holdings. Paper 28 at 6-17 (“Expanded Panel Decision”).

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