Category Archives: Uncategorized

10 Minute Webinar on IPR Claim Amendments In View of Aqua Products

If you are interested in knowing more about amendments in IPR proceedings and the practical impact of the Federal Circuit’s en banc Aqua Products decision, click here to view a brief 10 minute presentation.

Posted in Aqua Products, Federal Circuit Review of PTAB Proceedings, inter partes review, Motion to Amend, PTAB, Uncategorized, Webinar | Tagged , , , , , , , | Leave a comment

Shire’s Granted Motion to Amend Offers Additional Insight Into PTAB Amendment Practice

When a patent undergoes review at the Patent Trial and Appeal Board (“PTAB”), the Patent Owner has an opportunity to file a motion to amend claims so that a substitute claim can be proposed for each claim sought to be amended. … Continue reading

Posted in claim challenges, inter partes review, Motion to Amend, prior art, PTAB, Uncategorized | Tagged , , , , , , , , , , , , | Leave a comment

Best Practices and Strategies for Patent Procurement and Enforcement Webinar Series

Looking for a holistic view of best practices and strategies for patent procurement and enforcement?  You are invited to attend a free, two-part webinar on best patent practices. Click this link to register.  I will be co-presenting with Christopher Larus of … Continue reading

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PTAB Narrows Its Preliminary Claim Interpretation To Uphold Cellular Patent

In July, 2014 Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) petitioned for inter partes review of claims 1, 2, 8-12 and 18-22 of U.S. Patent No. 7,787,431 owned by Intellectual Ventures II  LLC (“IV”).  In February, 2015, the Board instituted … Continue reading

Posted in Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Expert Witnesses, inter partes review, prior art, PTAB, Uncategorized | Tagged , , , , , , , , | Leave a comment

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take charge” approach to … Continue reading

Posted in America Invents Act, claim challenges, Claim Construction, Damages, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, preponderance of evidence, prior art, PTAB, PTAB Patent Trials, Uncategorized | Tagged , , , , , , , , , , , , , , | Leave a comment

PTAB Trials Rule Package Library

Some of you have requested a collection of the rule packages from the PTAB.  Click on the link below for each document: A – Umbrella Admin Trial Rules (Final Rule 2012) B – IPR, PGR and CBM (Final Rule 2012) C … Continue reading

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Federal Circuit Reinforces PTAB’s Authority to Institute Trial on Selected Claims in Synopsis v. Mentor Graphics Appeal

Newcomers to post-grant proceedings are often surprised by the PTAB’s claim-by-claim approach to patent challenges under the America Invents Act.  When reporting statistics about IPRs, commentators tend to ignore these considerations: First, an IPR petition can be drafted to challenge all or some … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, clear and convincing evidence, doctrine of claim differentiation, Uncategorized | Tagged , , , , , , , , , , , , , , , , , , , | Leave a comment

Judge Rader to Retire from the Federal Circuit

Judge Rader announced his plans to retire from the Federal Circuit at the end of this month. Different sources are reporting that he has indicated an interest in teaching intellectual property to students in various countries. This will also allow … Continue reading

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Chief Judge Rader Stepping Down from Chief Judge Position, but Still Serving as CAFC Judge

From the U.S. Court of Appeals for the Federal Circuit Web Page: CHIEF JUDGE RANDALL R. RADER TO STEP DOWN AS CHIEF JUDGE ON MAY 30, 2014 Chief Judge Randall R. Rader today announced his intention to step down as … Continue reading

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Federal Circuit Dismisses Appeals by Petitioners Who Were Denied Inter Partes Reviews

The Federal Circuit issued two orders on April 24, 2014 dismissing appeals by petitioners in proceedings where the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR).  Each appeal is summarized as follows: St. Jude Medical, … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, claim challenges, Federal Circuit, inter partes review, Litigation, Mandamus Actions in the Federal Circuit, Patent Reform, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , | Leave a comment