Category Archives: reexamination generally

Declaratory Judgment Plaintiff and Stays Pending Reexamination

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents … Continue reading

Posted in estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, Litigation, Protective Order, reexamination generally, reexamination pendency, stay | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

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

Marine Polymer Technologies v. HemCon, Inc. and Intervening Rights

Marine Polymer Technologies, Inc. v. HemCon, Inc. (Fed. Cir. 2011) is a widely reported case that raises some questions about the scope of the application of intervening rights.  It involves a matter where the literal language of a claim was … Continue reading

Posted in absolute intervening rights, Appealable, equitable intervening rights, ex parte reexamination, intervening rights, Litigation, past damages, reexamination generally | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

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

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 … Continue reading

Posted in America Invents Act, Damages, estoppel, Ex Parte Prosecution, ex parte reexamination, future damages, inter partes reexamination, inter partes review, Litigation, past damages, Patent Reform, Post Grant Review, PTAB, reexamination generally | 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

Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes

Pre-Issuance Challenge Option Added Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122.  Written submission of the relevance of a patent application,  patent, published patent application, or other printed publication must … Continue reading

Posted in America Invents Act, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Patent Reform, Post Grant Review, preissuance submissions by third parties, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , | 3 Comments

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

Estoppel in Post-Grant Review (cont’d)

In the previous post we discussed some aspects of post-grant review (PGR)  in the current bill before the Senate.  The grounds available for petition in PGR are more comprehensive than those available for traditional reexamination and and also for the … Continue reading

Posted in estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, inter partes reexamination, inter partes review, Litigation, Post Grant Review, reexamination generally | Tagged , , , , , , , , , , , , | 1 Comment

Post-Grant Review and Estoppel in the Current Patent Reform Bill

When the Senate returns from recess next month it will be debating patent reform, and in particular the Leahy-Smith  America Invents Act.  A copy of the redlined version passed by the House is found here.  (thanks to Brad Pedersen of Patterson Thuente Christensen … Continue reading

Posted in estoppel, ex parte reexamination, inter partes reexamination, Litigation, Post Grant Review, PTAB, reexamination generally | Tagged , , , , , , , , , , | 1 Comment