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Tag Archives: narrowing
Preissuance Submission Final Rules Published July 17, 2012
The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions … Continue reading
Posted in America Invents Act, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, preissuance submissions by third parties, reexamination generally, Substantial New Question (SNQ), Uncategorized
Tagged Bianchi, claims, damages, estoppel, ex parte reexamination, inter partes review, issued patent, litigation, narrowing, past damages, patent, patent claims, patent litigation, patent reform, PGR, post-grant review, reexam, reexamination, SNQ, substantial new question of patentability, substantive amendment, Tim Bianchi
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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 Bianchi, claims, damages, estoppel, ex parte prosecution, ex parte reexamination, inter partes review, intervening rights, issued patent, litigation, narrowing, past damages, patent claims, patent litigation, patent prosecution, patent reform, petition, PGR, post-grant review, reexam, reexamination, SNQ, substantial new question of patentability, Tim Bianchi
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TiVo’s Reexamination Strategy Helps Win a Stay in the Northern District of California
The chronology of the dispute between TiVo, AT&T and Microsoft is complex and so are the digital video recorder (DVR) technologies covered in the patents that are asserted. All of these complexities seemed to weigh in favor of a stay in … Continue reading
Posted in Appealable, ex parte reexamination, factors for stay, Litigation, reexamination generally, stay, Uncategorized
Tagged Bianchi, claims, ex parte reexamination, issued patent, litigation, Microsoft, motion for stay, narrowing, patent, patent claims, patent litigation, reexam, reexamination, stay, Tim Bianchi, TiVo
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Petition Granted for Rehearing en banc of Akamai Technologies v. Limelight Networks
On April 20, 2011, the Federal Circuit granted the petition by Akamai Technologies for rehearing en banc its appeal in Akamai Technologies, Inc. v. Limelight Networks, Inc. The order vacated the earlier opinion of December 20, 2010. The order includes … Continue reading
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 Bianchi, Board, board of patent appeals, BPAI, claims, damages, doctrine of claim differentiation, federal circuit, intervening rights, issued patent, narrowing, past damages, patent claims, patent litigation, reissue, substantive amendment, Supreme Court, tanaka, Tim Bianchi
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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 Bianchi, claims, intervening rights, narrowing, patent litigation, reexam, reexamination, Tim Bianchi
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