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Category Archives: Ex Parte Prosecution
Federal Circuit Employs Phillips Claim Construction to Measure Claims Amended in Reexamination for Possible Intervening Rights
When patent owners sue an accused infringer for patent infringement, one way for the accused infringer to avoid liability is to show noninfringement of the patent claims. But if the claims are extremely broad, the accused infringer may find it difficult … Continue reading
Posted in Broadest Reasonable Interpretation, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, Damages, Ex Parte Prosecution, Federal Circuit, inter partes review, intervening rights, Litigation, past damages, Phillips claim construction, Post Grant Review, preponderance of evidence, prior art, reexamination generally
Tagged Bianchi, BRI, broadest reasonable interpretation, burden of proof, CBM, covered business method review, federal circuit, inter partes review, intervening rights, IPR, past damages, PGR, Phillips construction, post-grant proceedings, post-grant review, reexamination, substantive amendment, Tim Bianchi
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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 AIA, Bianchi, CBM, covered business method, ex parte prosecution, ex parte reexamination, Forum, inter partes review, IPR, patent prosecution, patent reform, patent trial and appeal board, PGR, PTAB, Tim Bianchi, US Patent and Trademark Office, USPTO
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AIA Post-Grant Practice Rapidly Integrates Federal Circuit and Board Decisions
AIA post-grant practice has many advantages over other proceedings, but one of the great benefits of AIA post-grant practice that we have not discussed is the speed in which AIA post-grant proceedings adopt recent patent decisions from different sources. This … Continue reading
Posted in America Invents Act, claim challenges, covered business methods, estoppel, Ex Parte Prosecution, Litigation, Patent Reform, patent-eligible subject matter, petitions practice, Post Grant Review, PTAB, PTAB Patent Trials
Tagged Bianchi, CBM, claims, covered business method, estoppel, federal circuit, issued patent, litigation, patent, patent claims, patent litigation, patent reform, patent trial and appeal board, petition, PGR, Post Grant Review, PTAB, Tim Bianchi
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Patent Office Guidance for Examiners in wake of CLS Bank Decision: No Change for Now
On May 13, 2013, the Patent Office issued a memo to USPTO examiners after the CLS Bank et al. v. Alice Corp. Federal Circuit en banc decision of last week. The memo instructs examiners to maintain existing examination procedure for … Continue reading
Patent Challenger Seeks PTAB Jurisdiction over “Involved” Pending Applications
The AIA provides new post-issuance proceedings to challenge issued patents. But can these challenges be used to stop related pending patent prosecution dead in its tracks? One recent inter partes review petition requests just that and time will tell whether … Continue reading
Posted in America Invents Act, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, PTAB
Tagged Bianchi, claims, ex parte prosecution, inter partes review, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent prosecution, patent reform, petition, PGR, PTAB, Tim Bianchi
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More IPR Filings on Day 2
If you are monitoring adoption of post-issuance filings you may have noticed that five more IPR filings were filed on the second day of operation of the PTAB trials portal pursuant to the new IPR and CBM patent review options … Continue reading
Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, covered business methods, Ex Parte Prosecution, indefiniteness, inter partes review, Litigation, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, PTAB, statutory subject matter
Tagged Bianchi, CBM, claims, covered business method, indefiniteness, inter partes review, IPR, issued patent, litigation, patent prosecution, patent reform, petition, PGR, Post Grant Review, PTAB, statutory subject matter, Tim Bianchi
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Preissuance Submission Final Rules Published July 17, 2012
The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions … Continue reading
Posted in America Invents Act, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, preissuance submissions by third parties, reexamination generally, Substantial New Question (SNQ), Uncategorized
Tagged Bianchi, claims, damages, estoppel, ex parte reexamination, inter partes review, issued patent, litigation, narrowing, past damages, patent, patent claims, patent litigation, patent reform, PGR, post-grant review, reexam, reexamination, SNQ, substantial new question of patentability, substantive amendment, Tim Bianchi
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Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I
Today, USPTO Director David Kappos posted a comment advocating the use of the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act. This is a topic of great interest among those … Continue reading
Posted in America Invents Act, Broadest Reasonable Interpretation standard, clear and convincing evidence, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, reexamination generally, Reissue, Uncategorized
Tagged Bianchi, Board, BPAI, burden of proof, claims, clear and convincing, ex parte reexamination, inter partes reexamination, inter partes review, issued patent, litigation, Microsoft, patent, patent claims, patent litigation, patent prosecution, patent reform, patent trial and appeal board, PGR, post-grant review, preponderance of the evidence, presumption of validity, PTAB, reexam, reexamination, reissue, Tim Bianchi
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Do You Want That Post-Grant Review Super-Sized? – Part III
This is the third post in a series of articles on PGR strategies. In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes. By statute, the … Continue reading
Posted in America Invents Act, covered business methods, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, ex parte reexamination, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, raised or reasonably could have raised, reexamination generally, Substantial New Question (SNQ), Uncategorized
Tagged Bianchi, claims, damages, estoppel, ex parte prosecution, ex parte reexamination, inter partes review, intervening rights, issued patent, litigation, narrowing, past damages, patent claims, patent litigation, patent prosecution, patent reform, petition, PGR, post-grant review, reexam, reexamination, SNQ, substantial new question of patentability, Tim Bianchi
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Do You Want That Post-Grant Review Super-Sized? – Part II
This is the second post in a series of articles on PGR strategies. In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t. PGRs are very different from ex … Continue reading
Posted in America Invents Act, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, Post Grant Review, PTAB, reexamination generally, Uncategorized
Tagged Bianchi, claims, ex parte prosecution, inter partes review, issued patent, litigation, patent, patent claims, patent litigation, patent prosecution, patent reform, petition, PGR, post-grant review, reexamination, Tim Bianchi
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