Category Archives: motion practice

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 , , , , , , , , , , , | Leave a comment

PTAB PRPS Trials Portal Gets Software Improvements

The PTAB PRPS Trials Portal just got better.  If you login to the system (depending on what browser you are using), you will see that PRPS now provides much better access to all public documents in each case.  This upgrade … 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 | Tagged , , , , , , , , , , , | Leave a comment

Parallel Litigation and PTAB Review Create Complex Interplay of Patentability and Validity

A company called CoreLogic Solutions, LLC owns U.S. Patent No. 5,361,201, relating to a process for appraising real estate property.  The ‘201 patent was filed on Oct. 19, 1992 and issued on Nov. 1, 1994.  Absent some kind of patent term extension, the ‘201 … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, indefiniteness, Litigation, motion practice, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, statutory subject matter | Tagged , , , , , , , , , , , , , , , , , , , | Leave a comment

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 , , , , , , , | Leave a comment

Docketing Tip for Post-Issuance Reviews on the Patent Review Processing System (PRPS)

Now that we are in the second week of post-issuance review filings, a number of filings are showing on the Patent Review Processing System (PRPS).  To date there are 18 reviews, of which 6 are covered business method (CBM) patent reviews, and … 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 | Tagged , , , , , , | Leave a comment

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 , , , , , , , , , , , , , , , , , , , | 1 Comment

Do You Want That Post-Grant Review Super-Sized? – Part II

This is the second post in a series of articles on PGR strategies.  In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t.  PGRs are very different from ex … Continue reading

Posted in America Invents Act, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, Post Grant Review, PTAB, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , | Leave a comment

Do You Want That Post-Grant Review Super-Sized? – Part I

Patents come in all shapes and sizes.  There are long ones, short ones, ones that are hard to read, and easy ones.  Some have 1 claim and some have 200 claims.  Some have valid claims, and some not-so-much.  But when it comes to … Continue reading

Posted in America Invents Act, motion practice, Patent Reform, petitions practice, Post Grant Review, PTAB, supplemental examination, Uncategorized | Tagged , , , , , , , , , , , , , , , , | Leave a comment

America Invents Act: Post-Grant Procedures for Patent Challengers

Now that the America Invents Act has become law there are several new provisions for patent challengers to consider.  For example, the Act includes: preissuance submissions by third party challengers (Sec. 8 — see the last post); Post-Grant Review (Sec. … Continue reading

Posted in America Invents Act, Appealable, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

Strategic Use of Reexamination in view of the Patent Reform Bill

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit.  The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”  The powerpoint presentation materials can be found here.  The … Continue reading

Posted in covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, inter partes review, Litigation, motion practice, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Reissue, stay, Substantial New Question (SNQ), supplemental examination | Tagged , , , , , , , , , , , , , , , , , , , , , , | 1 Comment