Tag Archives: inter partes reexamination

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

Patent Trends to Watch in 2016

2016 is starting off with a bang!  A number of interesting new developments have occurred as we enter into this new year: The Supreme Court will review broadest reasonable interpretation (BRI), courtesy of the petition for cert in Cuozzo The Federal Circuit … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation, Broadest Reasonable Interpretation standard, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, Supreme Court Review of post-grant issues | Tagged , , , , , , , , , , , , , , , | Leave a comment

See You at the AIPLA 2014 Spring Meeting!

I am presenting at the AIPLA Spring Meeting on May 15, 2014 in Philadelphia and hope to see you there.  My task is to provide strategies for filing inter partes reviews, covered business method reviews and post-grant reviews.  I hope … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review | Tagged , , , , , , , , , , , | Leave a comment

Joint Motions to Terminate Patent Reviews Late in Trial Proceedings

One of the advantages of patent reviews under the America Invents Act is that the parties may settle before completion of the proceedings and file a joint motion to terminate these proceedings.  The Patent Trial and Appeal Board (PTAB or … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Post Grant Review, PTAB, PTAB Patent Trials, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , | 1 Comment

CLE Event: Review of First Year of Patent Office Trials

The America Invents Act provides us several new ways to challenge issued patents. If you are curious about what we have learned in this first year fourteen months of patent office trials, please tune into my hour webinar tomorrow morning (Dec. … Continue reading

Posted in America Invents Act, covered business methods, Depositions, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA | Tagged , , , , , , , , , , , , , , , | Leave a comment

Prosecution Bars and PTAB Practice

In an earlier post we explored many ways that reexamination differs from post-grant review, inter partes review, and covered business method review. The PTAB has been very clear that reexamination and AIA patent trials are very different.  For example, in … Continue reading

Posted in covered business methods, inter partes review, Litigation, motion practice, Post Grant Review, Prosecution Bar, Protective Order, PTAB, PTAB Patent Trials, reexamination generally | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

SAP Files Ex Parte Reexamination Request using Prior Art from Ongoing Litigations

As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act.  To advance its PTAB … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, Post Grant Review, prior art, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch | Tagged , , , , , , , , , , , , , , , , , , , , | Leave a comment

AIA Patent Trials Differ from Reexamination

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review … Continue reading

Posted in America Invents Act, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, pro hac vice admission, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , , , , , , , , , , | 1 Comment

Steady Stream of AIA Post-Issuance Review Petitions Filed in PTAB

It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB. Look at it this … Continue reading

Posted in America Invents Act, covered business methods, estoppel, estoppel from administrative proceeding, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , | Leave a comment

Comparative Study of Post Issuance Review Options

Today I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company.  A PDF of our joint presentation is found here. The presentation provides … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, Claim Construction, clear and convincing evidence, covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, indefiniteness, inter partes reexamination, inter partes review, Litigation, motion practice, Patent Reform, patent-eligible subject matter, petitions practice, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, statutory subject matter, supplemental examination | Tagged , , , , , , , , , , , , , , , , , , , | 1 Comment