Category Archives: Patent Reform

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

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

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

SAP Joins PTO against Versata in Eastern District of Virginia

You may recall that Versata sued the Patent Office in the Eastern District of Virginia to challenge the PTAB’s decision to institute a CBM review of Versata’s U.S. 6,553,350 patent.  Versata Development Group, Inc. v. Rea, 1:13-cv-00328-GBL-IDD (E.D. VA).  It turns out … Continue reading

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

PTAB CBM: Versata Patent Claims Unpatentable under 35 U.S.C. § 101

On June 11, 2013, the Patent Trial and Appeal Board (PTAB) issued a decision holding claims 17 and 26-29 of Versata’s 6,553,350 patent  unpatentable under 35 U.S.C. § 101.  This decision arises from a petition filed on Sep. 16, 2012, in a … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, covered business methods, ex parte reexamination, Litigation, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA, reexamination generally | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

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 , , , , , , , , , , , , , , , , , | 2 Comments

Federal Circuit Appeal Decision in Versata Software v. SAP

A detailed discussion of the Versata v. SAP litigation and a timeline was provided in my earlier post.  I reported that there are three actions related to this dispute:  one in the PTAB, one in the Eastern District of Virginia, … Continue reading

Posted in covered business methods, Damages, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , , , , | 1 Comment

Progressive Casualty Litigation Stayed Pending Outcome of Liberty Mutual CBMs

Progressive Casualty Insurance Co. sued different insurance companies for patent infringement of 5 of its patents in 2010-2012 in the Northern District of Ohio.  (Cases 1:10CV01370 and 1:11CV00082 against Safeco; Case 1:12CV01068 against State Farm; and Case 1:12CV01070 against Hartford.) … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, estoppel, estoppel from administrative proceeding, factors for stay, indefiniteness, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, statutory subject matter, stay, Uncategorized | Tagged , , , , , , , , , , , , , , , , , | Leave a comment