Category Archives: Uncategorized

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

Eastern District of Texas Denies SAP’s Motion to Vacate the Judgment in the Versata Patent Infringement Case

SAP recently learned that the Eastern District of Texas denied its motion to set aside or stay a district court judgment in favor of Versata for infringement of its U.S. Pat. 6,553,350 (Versata Software, Inc v. SAP America, Inc., No. 2:07-cv-00153 … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Federal Circuit, patent-eligible subject matter, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Stay in Federal Circuit, Uncategorized | Tagged , , , , , , , , , | Leave a comment

Eastern District of Virginia Decides PTAB Decision to not institute IPR is Not Appealable

A patent owner insists that your company infringes a patent and makes a claim of patent infringement.  You have settled patent infringement assertions before, but this patent seems invalid over known prior art.  You consult with your patent counsel and … Continue reading

Posted in America Invents Act, inter partes review, Mandamus Actions in the Federal Circuit, Patent Reform, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , , | 1 Comment

USPTO Statistics Show Inter Partes Patent Reviews are Frequently Settled Before Final Board Decision

The U.S. Patent Office regularly posts statistics on post-grant proceedings such as inter partes review and covered business method patent review.   An excerpt of PTAB statistics for February 13, 2014 is found below.  The acronyms “FWD” and “RAJ” stand … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, Termination of Post-Grant Proceedings, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

Upcoming speaking announcement

I am speaking at “Best Practices in Patent Monetization” in San Francisco on March 6 & 7.  Attendees will learn tips and strategies to maximize the strategic and financial value from their portfolios, manage the buying and selling process, conduct … Continue reading

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