Tag Archives: patent litigation

Federal Circuit’s Aqua Products Decision Clarifies Burden on IPR Petitioner to Challenge Amended Claims

On October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”).  Aqua Prods. v. … Continue reading

Posted in Adjudicative instead of examinatorial, Broadest Reasonable Interpretation standard, claim challenges, estoppel from administrative proceeding, Federal Circuit Review of PTAB Proceedings, Motion to Amend, preponderance of evidence, reexamination generally, Settlements in Post-Grant Proceedings, Termination of Post-Grant Proceedings | 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

Supreme Court’s Stryker/Halo Decision Makes it Easier for Courts to Award Enhanced Damages In Patent Infringement Cases

The recent Supreme Court decisions in the Stryker and Halo cases just made it easier for courts to award enhanced damages in patent infringement cases, discarding Seagate’s “objective recklessness” test. The Seagate Test In 2007, the Federal Circuit announced a test for enhanced … Continue reading

Posted in Damages, enhanced damages, Federal Circuit, Litigation | 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

Board Guidance on its View of Petitioner Estoppel: Westlake Services v. Credit Acceptance Corp:

July 21, 2015 Last week, the Board provided an opinion to offer guidance on its view of the scope of petitioner estoppel.  The Westlake Services v. Credit Acceptance Corp. decision relates to the scope of estoppel to a Petitioner following a final written decision from … Continue reading

Posted in America Invents Act, covered business methods, estoppel, Post Grant Review, raised or reasonably could have raised, Termination of Post-Grant Proceedings | Tagged , , , , , , , , | Leave a comment

Are Your Patent Procurement Guidelines Outdated?

  I saw a bumper sticker that said:  “Change is inevitable, but growth is optional.”  This is true in many facets of life, and it is true for patent practice.  The changes of the past few years are numerous and … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, Litigation, Post Grant Review, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , | Leave a comment

In re Cuozzo Speed Technologies: Federal Circuit Affirms Board Finding of Unpatentability in First IPR

The Federal Circuit affirmed the final determination of the Board in the first inter partes review under the Leahy-Smith America Invents Act (AIA).   Garmin petitioned for IPR of claims 10, 14 and 17 of U.S. Patent No. 6,778,074 owned by Cuozzo … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Federal Circuit, inter partes review, Mandamus Actions in the Federal Circuit, prior art, PTAB Patent Trials, reexamination generally | Tagged , , , , , , , , , , , , , , | Leave a comment

Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel

October 17, 2014 Last month, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude joinder requests by an existing party to an ongoing proceeding.  (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and … Continue reading

Posted in America Invents Act, Future of PTAB Trial Practice, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Litigation, Patent Reform, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , | Leave a comment