Tag Archives: intervening rights

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

En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening Rights

In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc.  On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the … Continue reading

Posted in absolute intervening rights, Damages, equitable intervening rights, intervening rights, Litigation, past damages, reexamination generally, Reissue | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

Declaratory Judgment Plaintiff and Stays Pending Reexamination

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents … Continue reading

Posted in estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, Litigation, Protective Order, reexamination generally, reexamination pendency, stay | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

Do You Want That Post-Grant Review Super-Sized? – Part III

This is the third post in a series of articles on PGR strategies.  In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes.  By statute, the … Continue reading

Posted in America Invents Act, covered business methods, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, ex parte reexamination, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, raised or reasonably could have raised, reexamination generally, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , , , , , , , , , , , , , , , | Leave a comment

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular … Continue reading

Posted in America Invents Act, Damages, estoppel, Ex Parte Prosecution, ex parte reexamination, future damages, inter partes reexamination, inter partes review, Litigation, past damages, Patent Reform, Post Grant Review, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , , , , , , , , , , | Leave a comment

Federal Circuit Decision in In re Tanaka

You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post.  On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion.  … Continue reading

Posted in Damages, doctrine of claim differentiation, Ex Parte Prosecution, intervening rights, Litigation, past damages, Reissue, Uncategorized | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

The Effect of Amendment in Reexam on Past Damages

Generally speaking, patent claims that are confirmed in reexamination without substantive changes retain all of the damages they would have obtained as if there was no reexam.  [Note that there are always exceptional situations.  For example, there are patent cases where a … Continue reading

Posted in Damages, reexamination generally | Tagged , , , , , , , | 1 Comment