Greenblum & Bernstein, P.L.C.



keePing TABs  No. 1


                                                                                                October  2012   

In This Issue

·    25 petitions gain acceptance under new AIA procedures

·    APJs handling the first batch of proceedings are identified

Contact Us:
Bruce Stoner
Chairman, Reexamination and Post-Grant Practice Group

703-716-1191 (phone)

703-716-1180  (fax)

·         The first wave of filings at the USPTO under the America Invents Act (“AIA”), enacted in September of 2011 has now occurred.  As of September 16, 2012, the USPTO began accepting petitions seeking to initiate inter partes review proceedings (“IPR petitions”) as well as petitions for post grant review against certain patents directed to covered business methods (“CBM petitions”). 

·         Through October 3, 2012, 25 petitions for review had been accorded filing dates: 8 CBM petitions and 17 IPR petitions.  Of these 25, 4 petitioners filed 2 or more petitions; one petitioner filed 5.  To view the Post Grant Filings filed under the AIA through October 8, 2012, click here.

·         The Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) assigned to these cases so far are a mix of long time “interference” judges and more recently appointed judges.  For example, APJs Michael P. Tierney, Jameson Lee, Sally Gardner Lane and Sally C. Medley are well-known to the interference bar, with 10 or more years experience in inter partes matters at the Board.  More recent additions are APJs Brian J. McNamara, Joni Y. Chang and Thomas L. Gianetti. 

·         So far, the vast majority of CBM and IPR petitions filed have identified related district court litigation. 

·         The PTAB has identified the following defects in filed petitions, which resulted in an action issued by the Office to permit the petitioner to correct the error: 

o   Failure to identify related matters or include a statement that there are none. 37 C.F.R. § 42.8(b)(2).

o   Exhibits not sequentially numbered in the 1001-1999 range. 37 C.F.R. § 42.63(c)

o   Failure to identify lead counsel in the petition or a separate paper. 37 C.F.R. §§ 42.8(b)(3), 42.10.

o   Failure to identify back-up counsel in the petition or a separate paper. 37 C.F.R. §§ 42.8(b)(3), 42.10

o   Non-agreement of the Exhibit List with the Exhibits filed, including duplicate documents

o   Failure to provide Petitioner’s addresses (e-mail, postal and hand-delivery) and phone numbers in the Petition

o   Failure to clearly designate lead and back-up counsel in the Petition, in accordance with 37 C.F.R. §42.8(b)(4) and §42.8(b)(3).


The NEWSLETTER Keeping Tabs is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property. The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  For more information, contact Bruce Stoner or Arnie Turk at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  Copyright 2011 GREENBLUM & BERNSTEIN, P.L.C.