Category Archives: Uncategorized

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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Board Proposes Solution for Petitioner if Expert Witness Not Available for Deposition in Patent Office Trial

In current post-grant practice, most petitions are accompanied by an expert declaration to support the assertions made by the petitioner.  If the petitioner successfully obtains institution of a patent office trial (inter partes review, covered business method patent review, or … Continue reading

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SAP’s Cert Petition Denied by Supreme Court in Versata Patent Infringement Suit

In earlier posts, I described the $391 million patent infringement judgment awarded to Versata for SAP’s alleged infringement of US Pat. 6,553,350.  I also detailed SAP’s attempts to avoid the judgment by challenging the ‘350 patent in the first covered business … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, petitions practice, Post Grant Review, software patents, Uncategorized | Tagged , , , , , , , , , , , , , , , , | Leave a comment

Early Termination of PTAB Proceeding Shows Versatility of PTAB Patent Trials

One of the criticisms lodged against traditional reexamination proceedings is that when a request for reexamination is filed, the proceeding may take on a life of its own and typically cannot be withdrawn even if the parties want to dismiss … Continue reading

Posted in America Invents Act, estoppel, inter partes review, Litigation, Termination of Post-Grant Proceedings, Uncategorized | Tagged , , , , , , , , , | 2 Comments