Archive for the ‘future damages’ Category

More Inter Partes Patent Reviews Filed on the PTAB PRPS

Thursday, September 27th, 2012

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 potential trials is now at 23 (actual trials have not be instituted yet, as these are still preliminary proceedings and the Board must decide whether they meet the requisite standard).

The most recent filings were by Sony (IPR2012-00033), Nissan North America (IPR2012-00037 and IPR2012-00035), and Synopsys, Inc. (IPR2012-00042 and IPR2012-00041).

Some of these recent filings are petitions for review of relatively few claims.  In certain matters grounds for unpatentability under 35 US.C. § 102 are made, with backstop arguments under 35 US.C. § 103.  In some such cases, the obviousness rejections are not supported by declaration evidence, so the Petitioner must feel fairly confident in the scope of the cited prior art.  When few claims are presented for review, more detailed assertions of prior art can be made in the 60 page maximum for the petition.  See IPR2012-00035 for one such example.  Of course, it is too early to tell if the Board will institute an inter partes review using such an approach and whether the Petitioner’s approach will be ultimately sucessful.  But time will tell, unless such matters settle before proceedings go further.

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Saturday, September 24th, 2011

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings

Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular application.  There is a reasonable argument to use this “assembly line” approach for very large portfolios.  But for smaller companies and/or for extremely strategic portfolios this approach may fail.  Why?  Because when the effort expended to establish patent rights is limited, the resulting patent applications can be hastily drafted, or just plain incomplete.  They can also fail to consider relevant prior art.  Such applications can turn into weak patents.  And weak patents in litigation or in reexamination may lose the day for the patent owner.

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“Past Damages” and Reexamination for Mature Patents

Monday, February 28th, 2011

An earlier post discussed the impact of amendments in reexamination, but there are some dynamics we should explore for “mature” patents.  A mature patent is an old patent that is close to expiration.  (For example, a patent that has less than 5 years of patent term before expiration.) 

When a patent is asserted late in its life, the patent can expire before a reexamination final decision is rendered.  That is because the patent reexamination and appeals can take more than 5 years in some cases.  If the litigation is “stayed” pending the outcome of the reexamination, then a court will use the outcome of the reexamination to simplify issues for the litigation.

Patent owners with a patent that expires during the reexamination really want at least one infringed claim to survive reexamination without substantive amendment to keep the possibility of past damages alive.  Future damages are not on the table, because the patent expired during the time the patent was in reexamination.

Potential infringers want just the opposite;  they want every claim to be substantively amended in the reexamination (or better yet, cancelled).  They don’t need to worry about future damages on an expired patent.

So for mature patent assertion situations, defendants want:  (1) reexamination, (2) a stay, and (3) substantive amendment of all asserted claims.  Of course, none of these things can be guaranteed.  And it is possible that the reexamination may render the claims stronger for the patent owner if not properly conducted or the prior art is weak.

And this raises another question:  What is the value of an intermediate (nonfinal) determination in a patent reexamination?  We will explore that in future posts.