Category Archives: America Invents Act

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take charge” approach to … Continue reading

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Patent Due Diligence and Evaluation After the AIA

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, inter partes review, Litigation, Patent Portfolio Management, Patent Reform, Post Grant Review, Prosecution Guidelines, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

4 Tips to Make Your Patent Portfolio AIA-Ready

The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings … Continue reading

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IPRs And Settlement of Patent Infringement Cases

The passage of the AIA is still relatively recent, yet statistics are starting to emerge that demonstrate the effective use of IPRs to settle patent infringement cases.  IAM magazine recently published an interesting report by Unified Patents showing that IPRs have … Continue reading

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Federal Circuit Reinforces PTAB’s Authority to Institute Trial on Selected Claims in Synopsis v. Mentor Graphics Appeal

Newcomers to post-grant proceedings are often surprised by the PTAB’s claim-by-claim approach to patent challenges under the America Invents Act.  When reporting statistics about IPRs, commentators tend to ignore these considerations: First, an IPR petition can be drafted to challenge all or some … Continue reading

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Patent Trends to Watch in 2016

2016 is starting off with a bang!  A number of interesting new developments have occurred as we enter into this new year: The Supreme Court will review broadest reasonable interpretation (BRI), courtesy of the petition for cert in Cuozzo The Federal Circuit … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation, Broadest Reasonable Interpretation standard, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, Supreme Court Review of post-grant issues | Tagged , , , , , , , , , , , , , , , | Leave a comment

Board Guidance on its View of Petitioner Estoppel: Westlake Services v. Credit Acceptance Corp:

July 21, 2015 Last week, the Board provided an opinion to offer guidance on its view of the scope of petitioner estoppel.  The Westlake Services v. Credit Acceptance Corp. decision relates to the scope of estoppel to a Petitioner following a final written decision from … Continue reading

Posted in America Invents Act, covered business methods, estoppel, Post Grant Review, raised or reasonably could have raised, Termination of Post-Grant Proceedings | Tagged , , , , , , , , | Leave a comment

Board Limits Multiple IPR Challenges in Samsung Electronics v. Rembrandt Wireless Technologies

June 22, 2015 Rembrandt Wireless Technologies sued Samsung and Research in Motion for infringement of  U.S. Patent 8,457,228 in June 2013.  The ‘228 patent relates to data communications, and in particular to a data communication system in which a plurality of modems … Continue reading

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Federal Circuit Interprets Board’s Broadest Reasonable Interpretation Standard – Part II

In Microsoft Corp. v. ProxyConn, Inc. v. Michelle K. Lee, Intervenor (Fed. Cir. cases 2014-1542 and -1543), the Federal Circuit reversed claim constructions made by the Board in the underlying IPRs.  One of the claim constructions that was reversed related … Continue reading

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Federal Circuit Interprets Board’s Broadest Reasonable Interpretation Standard – Part I

We know from the Federal Circuit’s decision in In re Cuozzo Speed Technologies, that the broadest reasonable interpretation (BRI) standard applies in IPRs, but in a recent appeal decision, the Federal Circuit has announced limits to the application of BRI. Microsoft had … Continue reading

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