Share on LinkedInShare on LinkedIn

ARTICLE · 15 AUGUST 2014

Parallel Litigation And Inter Partes Review: Don't Forget About Reissue

Jones Day
Jones Day
Contributor
Jones Day

Jones Day

Jones Day is a global law firm with more than 2,400 lawyers in 40 offices across five continents....

View firm profile
Explore more from Jones Day

Inter partes review ("IPR") was introduced by the America Invents Act ("AIA") to provide a trial-like proceeding for challenging the patentability of patent claims based on patents and printed publications.

United StatesIntellectual Property
Joshua Nightingale
Joshua Nightingale
David Cochran
David Cochran
Author LinkedIn connections

Inter partes review ("IPR") was introduced by the America Invents Act ("AIA") to provide a trial-like proceeding for challenging the patentability of patent claims based on patents and printed publications. An IPR trial is often conducted in parallel with United States district court litigation involving the same patent, with an accused infringing party in the litigation filing a petition before the United States Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("the Board") seeking a partial patentability review of the patent.1 For the IPR trial to be instituted, the petitioner must establish a reasonable likelihood that it will prevail in showing unpatentability of at least one challenged claim. After institution, the AIA provides the patent owner with the opportunity to file a motion to amend the patent by cancelling any challenged claim and proposing a reasonable number of substitute claims. 35 U.S.C. § 316(d)(1).

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP
Article

The Ninth Circuit Affirms Dismissal Of DMCA CMI Removal Claim Against AI Code Generator – Output Is A New Work Not A Copy Of Training Data

There was a significant ruling in the Doe v. Github case involving training of AI code generator models on open source. The United States Court of Appeals for The Ninth Circuit affirmed the district court ruling dismissing part of an action brought under the Digital Millennium Copyright Act (“DMCA”) by programmers against GitHub, Inc., and other defendants. The issues centered on whether defendants removed copyright management information (CMI) from content used to train the AI code generator models.
United StatesIntellectual Property
Sheppard
Sheppard
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

AI Learning Or AI Copying? Ninth Circuit Weighs In

The Ninth Circuit held that GitHub Copilot's AI-generated code did not violate DMCA's copyright management information (CMI) removal provisions, even when output resembled source code, because the system generated new works through probabilistic patterns rather than retrieving and stripping information from existing copies. This decision establishes a critical distinction between AI systems that learn and generate versus those that retrieve and reproduce, with significant implications for how courts evaluat
United StatesIntellectual Property
Ballard Spahr LLP
Ballard Spahr LLP
Article

Ninth Circuit Vacates CFAA Injunction Against Perplexity's Comet AI Agent

The Ninth Circuit Court of Appeals vacated a preliminary injunction against Perplexity AI, determining that when an AI agent acts at a user's direction, it is the user—not the AI company—who "accesses" computer systems under federal and California computer fraud statutes. This landmark appellate decision addresses how existing computer-access laws apply to agentic artificial intelligence and has significant implications...
United StatesMedia, Telecoms, IT, Entertainment
Jones Day
Jones Day
Article

EU Commission Pushes for Transposition of the EmpCo Directive on Environmental Claims

The European Commission has initiated infringement procedures against 20 EU Member States for failing to transpose the EmpCo Directive by the March 27, 2026 deadline. This directive aims to combat greenwashing by requiring substantiation of environmental claims and third-party certification for sustainability labels, with full implementation expected by September 27, 2026.
European UnionConsumer Protection
Jones Day
Jones Day
Article

Commission Proposes EU Public Procurement Act

The European Commission has proposed replacing the EU's three core procurement directives with a single, directly applicable Regulation that would fundamentally reshape how companies compete for public contracts across Member States. The reform introduces mandatory quality criteria thresholds, embeds ESG considerations as evaluation factors, and establishes new security and European-preference provisions that could restrict participation based on ownership, supply chain exposure, and strategic dependencies.
European UnionGovernment, Public Sector
Jones Day
Jones Day
Article

Federal Court Holds New York’s Climate Superfund Law Preempted By CAA

A federal court has struck down New York's Climate Change Superfund Act, which sought to recover $75 billion from fossil fuel companies based on historical emissions. The ruling found the Act preempted by the Clean Air Act, marking the first judicial decision on state climate superfund legislation and establishing that EPA's rescission of the endangerment finding does not alter preemption analysis.
United StatesEnvironment
Jones Day
Jones Day
Article

Amendment To The General Rules Under Mexico’s Anti-Money Laundering Law (LFPIORPI): Key Regulatory Changes Under Acuerdo 115/2026

Mexico's comprehensive anti-money laundering framework has undergone a sweeping transformation through Acuerdo 115/2026, introducing mandatory risk-based methodologies, enhanced client due diligence protocols, and automated monitoring requirements. With implementation deadlines beginning March 1, 2027, obligated parties conducting vulnerable activities face compressed timelines to overhaul their compliance infrastructure while navigating heightened enforcement risks and stricter beneficial ownership thresho
MexicoGovernment, Public Sector
Jones Day
Jones Day
Article

China's Supreme Court Issues Landmark Judicial Rules On AI: Implications For Product Liability, IP, Data, And Generative AI

China's Supreme People's Court has issued comprehensive judicial rules addressing artificial intelligence disputes, establishing frameworks for product liability, intellectual property rights, and data protection. These landmark opinions provide critical guidance for global companies navigating AI-related legal risks in China's evolving regulatory landscape.
ChinaIntellectual Property
Jones Day
Jones Day
Article

New EU Guidelines On Abuse Of Dominance: Recalibrated Framework, With Ample Room For Aggressive Enforcement

The European Commission has adopted final Guidelines on exclusionary abuses of dominance under Article 102 TFEU, introducing a "workable effects approach" that narrows presumptions while expanding guidance on objective justifications and recognizing sustainability benefits as valid efficiencies for the first time. These Guidelines replace the 2008 Enforcement Priorities Guidance and are expected to significantly impact enforcement practices across EU Member States and beyond, particularly for digital market
European UnionAntitrust/Competition Law
Jones Day
Jones Day