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Category Archives: estoppel
Early Termination of PTAB Proceeding Shows Versatility of PTAB Patent Trials
One of the criticisms lodged against traditional reexamination proceedings is that when a request for reexamination is filed, the proceeding may take on a life of its own and typically cannot be withdrawn even if the parties want to dismiss … Continue reading
Early PTAB Orders Demonstrate Differences Between AIA Patent Trials and District Court Trials
Patent practitioners are still absorbing some of the differences and advantages that are unique to litigation in the PTAB as opposed to district court litigation. For example, PTAB proceedings only decide questions of validity and are not directed to rule … Continue reading
Posted in America Invents Act, claim challenges, Claim Construction, clear and convincing evidence, estoppel, inter partes review, Litigation, preponderance of evidence, PTAB, PTAB Patent Trials, Uncategorized
Tagged appeal, Bianchi, board of patent appeals, burden of, clear and convincing, estoppel, inter partes review, IPR, issued patent, litigation, patent claims, patent litigation, patent trial, patent trial and appeal board, preponderance of the evidence, presumption of validity, PTAB, Tim Bianchi
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AIA Patent Trials Differ from Reexamination
In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination. AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review … Continue reading
Posted in America Invents Act, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, pro hac vice admission, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch, Substantial New Question (SNQ), Uncategorized
Tagged appeal, Bianchi, CBM, covered business method, ex parte reexamination, federal circuit, inter partes reexamination, inter partes review, IPR, patent, patent claims, patent reform, patent trial and appeal board, Post Grant Review, PTAB, reexamination, SNQ, substantial new question of patentability, Tim Bianchi
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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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Steady Stream of AIA Post-Issuance Review Petitions Filed in PTAB
It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB. Look at it this … Continue reading
Posted in America Invents Act, covered business methods, estoppel, estoppel from administrative proceeding, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, reexamination generally, Uncategorized
Tagged Bianchi, CBM, covered business method, inter partes reexamination, inter partes review, IPR, patent, patent reform, PGR, Post Grant Review, PTAB, Tim Bianchi
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More Inter Partes Patent Reviews Filed on the PTAB PRPS
As of 01:00 on September 27, the number of petitions for covered business method (CBM) patent reviews remained at 6, but five more petitions for inter partes reviews (IPRs) were filed, making a total of 17 IPRs. The total number of pending … Continue reading
Posted in America Invents Act, claim challenges, Claim Construction, covered business methods, Damages, estoppel, future damages, inter partes review, intervening rights, Litigation, motion practice, Patent Reform, Post Grant Review, preponderance of evidence, PRPS Patent Review Processing System, PTAB, raised or reasonably could have raised
Tagged Bianchi, inter partes review, patent, patent claims, PGR, Post Grant Review, PTAB, Tim Bianchi
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Comparative Study of Post Issuance Review Options
Today I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company. A PDF of our joint presentation is found here. The presentation provides … Continue reading
Posted in America Invents Act, Broadest Reasonable Interpretation standard, Claim Construction, clear and convincing evidence, covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, indefiniteness, inter partes reexamination, inter partes review, Litigation, motion practice, Patent Reform, patent-eligible subject matter, petitions practice, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, statutory subject matter, supplemental examination
Tagged Bianchi, CBM, claims, clear and convincing, estoppel, inter partes reexamination, inter partes review, IPR, litigation, patent litigation, patent reform, petition, PGR, Post Grant Review, PTAB, reexam, reexamination, SNQ, substantial new question of patentability, 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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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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