Category Archives: America Invents Act

Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

A petition for covered business method review, inter partes review, or post-grant review may  be filed on behalf of of several different parties and real parties in interest.  Typically, such filings involve one, two, or three named persons (e.g., companies) … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Comments Off on Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

SAP’s Cert Petition Denied by Supreme Court in Versata Patent Infringement Suit

In earlier posts, I described the $391 million patent infringement judgment awarded to Versata for SAP’s alleged infringement of US Pat. 6,553,350.  I also detailed SAP’s attempts to avoid the judgment by challenging the ‘350 patent in the first covered business … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, petitions practice, Post Grant Review, software patents, Uncategorized | Tagged , , , , , , , , , , , , , , , , | Leave a comment

Litigation Defendants Cannot Rely on Joinder to Avoid Timing Requirements of Inter Partes Reviews

In my last post, we explored the interplay of the one-year bar under 35 U.S.C. § 315(b) and joinder in inter partes review (IPR) proceedings.  That case involved a Petitioner who could not have filed an IPR petition prior to the … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, inter partes review, Joinder of AIA Proceedings, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Leave a comment

Patent Office Board Takes a Bite out of Apple’s IPR Challenge of VirnetX Patents

In  mid-2013 Apple filed seven inter partes review petitions to challenge four VirnetX patents.  Recently, the Patent Trial and Appeal Board (the Board) denied all seven inter partes review (IPR) petitions.  This outcome demonstrates the Board’s current interpretation of the one-year bar … Continue reading

Posted in America Invents Act, claim challenges, inter partes review, Joinder of AIA Proceedings, Joinder of Parties Post-petition, motion practice, PTAB, rehearing request, Termination of Post-Grant Proceedings | Tagged , , , , , , , | Leave a comment

Joint Motions to Terminate Patent Reviews Late in Trial Proceedings

One of the advantages of patent reviews under the America Invents Act is that the parties may settle before completion of the proceedings and file a joint motion to terminate these proceedings.  The Patent Trial and Appeal Board (PTAB or … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Post Grant Review, PTAB, PTAB Patent Trials, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , | 1 Comment

CLE Event: Review of First Year of Patent Office Trials

The America Invents Act provides us several new ways to challenge issued patents. If you are curious about what we have learned in this first year fourteen months of patent office trials, please tune into my hour webinar tomorrow morning (Dec. … Continue reading

Posted in America Invents Act, covered business methods, Depositions, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA | Tagged , , , , , , , , , , , , , , , | Leave a comment

Parties Terminate CBM Before They Settle Dispute to Avoid PTAB Decision

In January of 2013, EZ Shield , Inc sued Harland Clarke Corp. for infringement of U.S. Pat. 8,346,637.  The ‘637 patent relates to a system for reimbursement of consumers  for losses incurred for specific forms of check fraud.  In April … Continue reading

Posted in America Invents Act, covered business methods, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

USPTO to Host AIA Second Anniversary Forum on Sept. 16

The USPTO will host an AIA Second Anniversary Forum on September 16, 2013, at the USPTO’s Alexandria campus in the Madison Auditorium from 1 to 5 pm, and also via webcast.  Here is the USPTO announcement: At the Forum, USPTO … Continue reading

Posted in America Invents Act, covered business methods, Ex Parte Prosecution, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , | Leave a comment

PTAB Grants Motion for Early Termination of Proceeding Before CBM Trial Institution

The Patent Trial and Appeal Board recently decided to grant a motion to terminate a CBM proceeding prior to a decision of whether to institute trial in that CBM proceeding.  In CBM2013-00015, between Oracle Corporation (Petitioner) and Community United IP, … Continue reading

Posted in America Invents Act, covered business methods, Patent Reform, Post Grant Review, PTAB, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , | 1 Comment

PTAB Authorizes SAP to file Opposition to Versata’s Rehearing Request

Even though the Rehearing Request filed by Versata last week is confidential, we can glean some insight about what it contained based on the publicly available documents of record.  Today the PTAB authorized SAP to file its motion to oppose … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Federal Circuit, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, rehearing request, statutory subject matter, Stay in Federal Circuit | Tagged , , , , , , , , , , , , , , , | Leave a comment