Lack of Written Description

In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
Continue Reading Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA).

Petition PRG2014-00008 was filed on August 5, 2014 by LaRose Industries, Inc. and Toys “R” Us – Delaware, Inc., challenging U.S. Patent 8,684,420 owned by Choon’s Design Inc. (Apparently, several earlier PGR petitions had been filed in error and have not been made public; hence the assignment of number 00008 to this petition.)

The patent at-issue was based on a series of continuing applications, some of which predated the changeover in U.S. patent laws that provides for Post Grant Review. Under the AIA, Post Grant Review is available to challenge a newly-issued patent – so long as its effective filing date is on or after March 16, 2013. The Petitioners will need to show that Choon was not entitled to any priority date earlier than its actual filing.
Continue Reading First Post Grant Review Petition Filed