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Category Archives: inter partes review
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 appeal, Bianchi, federal circuit, inter partes review, IPR, issued patent, litigation, patent claims, patent litigation, post-grant review, PTAB, Tim Bianchi
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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
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
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.
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 appeal, Bianchi, claims, en banc review, ex parte prosecution, ex parte reexamination, federal circuit, inter partes review, IPR, issued patent, litigation, Motion to Amend, past damages, patent, patent claims, patent litigation, patent trial and appeal board, PGR, post-grant review, PTAB, reexamination, reissue, Tim Bianchi
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Shire’s Granted Motion to Amend Offers Additional Insight Into PTAB Amendment Practice
When a patent undergoes review at the Patent Trial and Appeal Board (“PTAB”), the Patent Owner has an opportunity to file a motion to amend claims so that a substitute claim can be proposed for each claim sought to be amended. … Continue reading
Posted in claim challenges, inter partes review, Motion to Amend, prior art, PTAB, Uncategorized
Tagged Amerigen, Bianchi, Idle Free, inter partes review, IPR, Masterimage, Motion to Amend, no new feature in amendment, patent claims, patent trial and appeal board, PTAB, Shire, Tim Bianchi
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PTAB Narrows Its Preliminary Claim Interpretation To Uphold Cellular Patent
In July, 2014 Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) petitioned for inter partes review of claims 1, 2, 8-12 and 18-22 of U.S. Patent No. 7,787,431 owned by Intellectual Ventures II LLC (“IV”). In February, 2015, the Board instituted … Continue reading
Posted in Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Expert Witnesses, inter partes review, prior art, PTAB, Uncategorized
Tagged Bianchi, claims, inter partes review, IPR, patent claims, patent trial and appeal board, preponderance of the evidence, PTAB, Tim Bianchi
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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
Posted in America Invents Act, claim challenges, Claim Construction, Damages, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, preponderance of evidence, prior art, PTAB, PTAB Patent Trials, Uncategorized
Tagged appeal, Bianchi, CBM, covered business method, inter partes reexamination, inter partes review, IPR, litigation, motion to stay, patent claims, patent trial and appeal board, PGR, post-grant review, PTAB, Tim Bianchi
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PTAB Dismisses Three IPR Petitions Based on Sovereign Immunity
Covidien LP had a license to U.S. Patent 7,062,251, owned by the University of Florida Research Foundation (UFRF, Patent Owner). UFRF alleged breach of contract by Covidien, and sued Covidien in Florida state court for breach of license. Covidien counterclaimed … Continue reading
Posted in Adjudicative instead of examinatorial, inter partes review, States rights and sovereign immunity
Tagged appeal, Bianchi, CBM, federal circuit, inter partes review, IPR, issued patent, litigation, patent, patent trial and appeal board, PGR, post-grant review, PTAB, sovereign immunity, Tim Bianchi
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