Tag Archives: CBM

PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities

Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights.  In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs … Continue reading

Posted in inter partes review, motion practice, PTAB, serial petitions, States rights and sovereign immunity, 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 Dismisses Three IPR Petitions Based on Sovereign Immunity

Covidien LP had a license to U.S. Patent 7,062,251, owned by the University of Florida Research Foundation (UFRF, Patent Owner).  UFRF alleged breach of contract by Covidien, and sued Covidien in Florida state court for breach of license.  Covidien counterclaimed … Continue reading

Posted in Adjudicative instead of examinatorial, inter partes review, States rights and sovereign immunity | Tagged , , , , , , , , , , , , , , | Leave a comment

Patent Due Diligence and Evaluation After the AIA

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, inter partes review, Litigation, Patent Portfolio Management, Patent Reform, Post Grant Review, Prosecution Guidelines, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

4 Tips to Make Your Patent Portfolio AIA-Ready

The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, inter partes review, Litigation, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

PTAB Relies on the Federal Circuit’s Recent § 101 Decision to Deny CBM Institution

On May 12, 2016, the Federal Circuit issued a decision on 101 patent eligibility  that overturned a summary judgment finding of § 101 invalidity for software used for databases.  Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756266 (Fed. Cir. … Continue reading

Posted in claim challenges, covered business methods, Federal Circuit, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , | Leave a comment

New PTAB Trial Practice Rules Effective May 2, 2016

On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.  A small correction to these Amendments was published on April 27.  I presented a summary of these … Continue reading

Posted in Amended Rulemaking, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , | Leave a comment

Federal Circuit Employs Phillips Claim Construction to Measure Claims Amended in Reexamination for Possible Intervening Rights

When patent owners sue an accused infringer for patent infringement, one way for the accused infringer to avoid liability is to show noninfringement of the patent claims.  But if the claims are extremely broad, the accused infringer may find it difficult … Continue reading

Posted in Broadest Reasonable Interpretation, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, Damages, Ex Parte Prosecution, Federal Circuit, inter partes review, intervening rights, Litigation, past damages, Phillips claim construction, Post Grant Review, preponderance of evidence, prior art, reexamination generally | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

IPRs And Settlement of Patent Infringement Cases

The passage of the AIA is still relatively recent, yet statistics are starting to emerge that demonstrate the effective use of IPRs to settle patent infringement cases.  IAM magazine recently published an interesting report by Unified Patents showing that IPRs have … Continue reading

Posted in America Invents Act, claim challenges, inter partes review, prior art, Settlements in Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , | Leave a comment

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