Archives
Categories
- Adjudicative instead of examinatorial (2)
- America Invents Act (86)
- Aqua Products (1)
- Boardside Chat Report (1)
- Book and Article Reviews (1)
- BRI v. Phillips Construction Issues (1)
- Broadest Reasonable Interpretation standard (16)
- claim challenges (40)
- indefiniteness (5)
- patent-eligible subject matter (17)
- prior art (13)
- statutory subject matter (8)
- Claim Construction (18)
- Claim Preclusion (1)
- clear and convincing evidence (7)
- doctrine of claim differentiation (2)
- Ex Parte Prosecution (23)
- Federal Circuit (17)
- Federal Circuit Review of PTAB Proceedings (4)
- inequitable conduct (2)
- inter partes review (73)
- 315(b) One Year Bar (7)
- estoppel (14)
- IPR Joinder (4)
- Motion to Amend (3)
- serial petitions (2)
- IPR (2)
- Issue Preclusion (1)
- ITC (1)
- joint infringement (1)
- Litigation (85)
- Damages (17)
- enhanced damages (1)
- future damages (3)
- intervening rights (5)
- past damages (9)
- estoppel from administrative proceeding (11)
- Expert (2)
- Joinder Post AIA (5)
- Phillips claim construction (1)
- Prosecution Bar (4)
- Protective Order (3)
- stay (11)
- factors for stay (8)
- Damages (17)
- Mandamus Actions in the Federal Circuit (4)
- Patent Portfolio Management (2)
- Patent Reform (51)
- petitions practice (12)
- Phillips-type construction (7)
- Post Grant Review (71)
- preponderance of evidence (8)
- pro hac vice admission (3)
- PRPS Patent Review Processing System (13)
- PTAB (82)
- PTAB Patent Trials (49)
- PTO Sued Under the APA (11)
- reexamination generally (57)
- Reissue (6)
- Settlements in Post-Grant Proceedings (3)
- software patents (2)
- States rights and sovereign immunity (2)
- supplemental examination (3)
- Supreme Court Review of post-grant issues (2)
- Termination of Post-Grant Proceedings (9)
- Uncategorized (64)
- Webinar (1)
Category Archives: motion practice
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
Patent Office Board Takes a Bite out of Apple’s IPR Challenge of VirnetX Patents
In mid-2013 Apple filed seven inter partes review petitions to challenge four VirnetX patents. Recently, the Patent Trial and Appeal Board (the Board) denied all seven inter partes review (IPR) petitions. This outcome demonstrates the Board’s current interpretation of the one-year bar … Continue reading
Posted in America Invents Act, claim challenges, inter partes review, Joinder of AIA Proceedings, Joinder of Parties Post-petition, motion practice, PTAB, rehearing request, Termination of Post-Grant Proceedings
Tagged Bianchi, claims, inter partes review, IPR, patent reform, patent trial and appeal board, PTAB, Tim Bianchi
Leave a comment
PTAB Provides More Guidance on Discovery
On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery. (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in … Continue reading
Posted in Depositions, Expert, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, motion practice, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials
Tagged appeal, Bianchi, BPAI, CBM, claims, federal circuit, inter partes review, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, PGR, Post Grant Review, PTAB, Tim Bianchi
1 Comment
PTAB IPR Petition Joinder Practice Gains Momentum
Suppose a patent owner files suit and the defendant wants to file an AIA post-grant proceeding to challenge the validity of the patent. Suppose further that the post-grant challenge is an inter partes review (IPR) filed by the defendant within … Continue reading
Posted in America Invents Act, Joinder of AIA Proceedings, motion practice, Patent Reform, PTAB, Uncategorized
Tagged 35 USC 315(b), 37 CFR 42.101(b), 37 CFR 42.122(b), Bianchi, claims, inter partes review, IPR, Joinder, patent, patent claims, patent reform, patent trial and appeal board, PTAB, Tim Bianchi
3 Comments
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
1 Comment
PTAB Provides Convenient Access to Instructive Orders, Notices, and Decisions
The Patent Trial and Appeals Board has provided a web page that compiles instructive orders, notices, and decisions. This is a handy reference site for practitioners to learn from decisions made in various covered business method (CBM), inter partes reviews … Continue reading
Posted in America Invents Act, covered business methods, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials
Tagged Bianchi, CBM, covered business method, decision, inter partes review, IPR, notice, order, patent trial and appeal board, PGR, Post Grant Review, PTAB, PTAB Patent Trials, Tim Bianchi
Comments Off on PTAB Provides Convenient Access to Instructive Orders, Notices, and Decisions
Patent Trial and Appeal Board (PTAB) Guidance on Pro Hac Vice Admissions
The PTAB (“Board”) has already decided some motions for pro hac vice admission in various PTAB case proceedings. A recent decision in case IPR2012-00035 referenced an earlier decision on motion for pro hac vice admission in case IPR2013-00010. The relevant part … Continue reading
Pro Hac Vice Admission Denied in SAP v. Versata CBM Patent Review
My prior post described the pro hac vice admission dispute between SAP and Versata Development Group in PTAB matter CBM2012-00001. The PTAB wasted no time and issued an order denying the motion for pro hac vice admission of Versata’s litigation … Continue reading
Posted in America Invents Act, covered business methods, motion practice, Post Grant Review, pro hac vice admission, PRPS Patent Review Processing System, PTAB
Tagged Bianchi, CBM, covered business method, covered business method patent review, litigation, PGR, pro hac vice, PTAB, SAP, Tim Bianchi, Versata
Leave a comment
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
Leave a comment