In this episode of the Post-Grant Podcast, Andy Zappia and Bryan Smith break down the USPTO's proposed rule for IPR and PGR proceedings designed to limit multiple validity challenges to patents. They discuss how the proposed rule would limit access to those proceedings, including a mandatory stipulation requirement, an automatic denial of institution if another tribunal has rendered a determination on validity, timing-based denials when parallel cases are likely to finish first, and a proposed narrow "extraordinary circumstances" exception. They also discuss practical implications for forum selection and strategy ahead of the November 17 comment deadline for the proposed rule.

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In this episode of our Post-Grant Podcast series, Andy Zappia and Ted Merkel delve into the complexities of the least-used proceeding created by the America Invents Act (AIA): namely derivation proceedings. The discussion highlights the first Federal Circuit decision reviewing a derivation proceeding and examines the challenges petitioners face in these cases, particularly the number of elements that petitioners must prove. The hosts also explore the alternative legal strategies, including correction of inventorship claims in district court, which may offer more strategic advantages.

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In this episode of the Post-Grant Podcast, Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB). The discussion centers around the recent Federal Circuit decision in the Ingenico case, which narrows the scope of IPR estoppel, and its potential tension with the PTAB's current approach to discretionary denial. The team delves into the implications of this decision for patent challengers, particularly in light of new PTAB guidance and recent cases that highlight the complexities of navigating estoppel and discretionary denial.

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In this episode of the Post-Grant Podcast, Troutman Pepper Locke Partner Andy Zappia is joined by Counsels Nick Gallo and Bryan Smith to explore recent shifts in discretionary denial practice at the Patent Trial and Appeal Board (PTAB). They discuss the implications of these changes for patent owners and petitioners, highlighting strategies for navigating the increased unpredictability in discretionary denial practice. The episode also discusses the PTAB's increasing focus on workload challenges and how that is impacting post-grant procedures.

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Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings.

In this episode, Troutman Pepper attorneys Andy Zappia, Kim Coghill, and Bryan Smith discuss the new final rule issued for director review in post-grant proceedings before the Patent Trial and Appeal Board (PTAB).

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Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings.

In this episode, Troutman Pepper Partners Andy Zappia, Meg O'Gara, and Duke Fitch discuss recent developments in obviousness-type double patenting and original patent requirements, and how they might impact strategies in post-grant proceedings.

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Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings.

In this episode, Troutman Pepper Partner Andy Zappia and Counsel Bryan Smith analyze the sanctions order made public on February 6 in the OpenSky v. VLSI IPR proceeding. They explore how sanctions work at the PTAB, the types of conduct that could expose a party to sanctions, and best practices to avoid them.

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Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings at the U.S. Patent Office (USPTO).

In this episode, Nick Gallo moderates a discussion with firm colleagues Andy Zappia and Bryan Smith on the increasingly active role of the USPTO director in inter partes and post-grant review proceedings, including through the director review procedure.

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Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings.

In this episode, Troutman Pepper Partner Andrew Zappia moderates a discussion with fellow firm Partner Gunnar Leinberg and Associate Christina Shifton on patent-eligible subject matter disputes under 35 USC Section 101 in IPR and PGR proceedings.

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Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings.

In the final installment of this three-episode series, Troutman Pepper attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O'Gara on the mechanics and strategic considerations for using reexamination as a means to amend claims in IPR and PGR proceedings.

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