News & Analysis as of July 14, 2025

Discovery

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2025

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Mintz - Intellectual Property Viewpoints on 5/28/2021

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

4 Things You Must Know about AIA Trial Depositions

Esquire Deposition Solutions, LLC on 7/11/2018

After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952,...more

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

McDonnell Boehnen Hulbert & Berghoff LLP on 1/4/2018

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on 5/3/2017

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

The PTAB Review - June 2016

Wilson Sonsini Goodrich & Rosati on 6/10/2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Stay Versus Stay: How Litigation Stays Pending IPRs Impact the 30-Month Regulatory Stay in Hatch-Waxman Litigation

WilmerHale on 3/28/2016

Upon initiation of a patent infringement action between branded and generic pharmaceutical companies, the Hatch-Waxman Act (21 U.S.C. § 355(j)) provides for an automatic 30-month stay of Food and Drug Administration approval...more

Inter Partes Review Proceedings: A Third Anniversary Report

Perkins Coie on 9/18/2015

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

Congress Continues to Promote Patent Reform Efforts

Orrick, Herrington & Sutcliffe LLP on 6/13/2015

In recent years, Congress has devoted a great deal of attention to patent reform. Those efforts led in 2011 to passage of the Leahy-Smith America Invents Act (AIA), which was the most extensive revision of the patent laws in...more

Six-Month Report Card: Post-Issuance Proceedings Under the AIA

McDermott Will & Emery on 4/8/2013

Introduction - On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties...more

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America Invents Act › Inter Partes Review (IPR) Proceeding › Discovery

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