Author Archives: Tim Bianchi

Patent Office Director Vidal Finds OpenSky’s IPR Conduct to be Abuse of Process

Director Vidal issued a careful decision concerning OpenSky’s copycat filings and subsequent conduct in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102. The conclusion provides a great summary of her findings:      Viewed as a whole, OpenSky’s … Continue reading

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What’s Important Now in Intellectual Property?

With all that is going on in world events and a pandemic that has raged on for over a year, it’s hard to focus on intellectual property as an important topic to discuss.  But we must because innovation has carried … Continue reading

Posted in Patent Portfolio Management, Patent Reform, PTAB, Uncategorized | Leave a comment

Thanks to IAM for the Global Leaders 2020 Designation

In case you are interested in a recent interview IAM conducted about US patent law and post-grant activities, the link with my comments is here.  Thanks to IAM for the Global Leaders 2020 award.  To all my colleagues and clients, thank … Continue reading

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A Split Panel of the Federal Circuit Reverses PTAB Finding of Unpatentability Without Remand in DSS v. Apple

In DSS Technology Management v. Apple Inc., a split panel of the Federal Circuit reversed a finding of patentability by the Patent Trial and Appeal Board (PTAB or the Board), but did so without remanding the case back to the … Continue reading

Posted in claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, inter partes review, IPR, prior art, Reversal With No Remand | Tagged , , , , , , , , , , , | Leave a comment

PTO Brief Argues Why PTAB Can Issue Decisions On Remand From FedCir

Under the America Invents Act IPRs are supposed to be completed with a final written decision no later than a maximum of 18 mos after institution. But if the FedCir remands for further findings on appeal can the PTAB issue … Continue reading

Posted in America Invents Act, Federal Circuit, remand to PTAB, Uncategorized | Tagged , , , , , , , , | Leave a comment

Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic

A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings.  In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of … Continue reading

Posted in America Invents Act, BRI v. Phillips Construction Issues, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Claim Preclusion, Federal Circuit Review of PTAB Proceedings, inter partes reexamination, Issue Preclusion, ITC, prior art, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , | Leave a comment

PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities

Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights.  In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs … Continue reading

Posted in inter partes review, motion practice, PTAB, serial petitions, States rights and sovereign immunity, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

PTAB Boardside Chat Provides Statistics About Multiple IPR Petition Filings

On October 24, 2017, PTAB Chief Judge David Ruschke and Lead Judge William Saindon conducted a webinar covering filing statistics for IPR petition filings, and in particular how multiple petitions have fared statistically in the PTAB.  They also announced three informative decisions relating … Continue reading

Posted in America Invents Act, Boardside Chat Report, inter partes review, IPR, serial petitions, Uncategorized | Tagged , , , | Leave a comment

10 Minute Webinar on IPR Claim Amendments In View of Aqua Products

If you are interested in knowing more about amendments in IPR proceedings and the practical impact of the Federal Circuit’s en banc Aqua Products decision, click here to view a brief 10 minute presentation.

Posted in Aqua Products, Federal Circuit Review of PTAB Proceedings, inter partes review, Motion to Amend, PTAB, Uncategorized, Webinar | Tagged , , , , , , , | Leave a comment

Federal Circuit’s Aqua Products Decision Clarifies Burden on IPR Petitioner to Challenge Amended Claims

On October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”).  Aqua Prods. v. … Continue reading

Posted in Adjudicative instead of examinatorial, Broadest Reasonable Interpretation standard, claim challenges, estoppel from administrative proceeding, Federal Circuit Review of PTAB Proceedings, Motion to Amend, preponderance of evidence, reexamination generally, Settlements in Post-Grant Proceedings, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , , , , , , , , , | Leave a comment