Tag Archives: patent trial and appeal board

Patent Board Denies First Data Corp. IPR Petitions Based on Real Party In Interest and One-Year Bar

October 21, 2014 In 2013, Cardsoft, LLC (Patent Owner) sued First Data Corp. (Petitioner) and First Data Merchant Services Corp. for patent infringement in the Eastern District of Texas, serving its complaint on May 2, 2013.  (Cardsoft (Assignment for the Benefit … Continue reading

Posted in 315(b) One Year Bar, Correction of Petition After Bar, Indemnification, inter partes review, Litigation, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , | 1 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

PTAB Applies “Issue Joinder” Analysis to Deny Microsoft’s IPR Joinder Requests

October 1, 2014 The reader may recall that last week an expanded PTAB panel announced an interpretation of 35 U.S.C. § 315(c) that essentially ruled out a joinder request for a subsequent IPR petition made by an existing party to … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, Future of PTAB Trial Practice, inter partes review, IPR Joinder, Joinder of AIA Proceedings, PTAB, PTAB Patent Trials | Tagged , , , , , , | Leave a comment

PTAB Joinder Practice Update: Board Interprets 35 U.S.C. § 315(c) to Require Party Joinder

Sep. 30, 2014 In at least two decisions last week, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude a joinder request by an existing party to the proceeding.  The … Continue reading

Posted in 315(b) One Year Bar, claim challenges, Future of PTAB Trial Practice, inter partes review, Litigation, prior art, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , | 1 Comment

U.S. Bancorp CBM Results in Cancellation of Retirement Capital Access Management Co.’s Patent Claims

In 2011, U.S. Patent 6,625,582, entitled Method And System For Converting A Designated Portion of Future Social Security And Other Retirement Payments To Current Benefits, was assigned to Retirement Capital Access Management Company LLC.  Benefit Funding Systems LLC asserted the ‘582 patent … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Post Grant Review, statutory subject matter | Tagged , , , , , , , | Leave a comment

Lex Machina’s 2013 Patent Litigation Report Shows Disparity Between Litigated Patents and those under PTAB Review

Litigation and post-grant proceedings often go hand-in-hand. A new litigation report published by Lex Machina summarizes patent litigation data for 2013 and prior years.  It is an interesting report and very easy to digest.  Two findings caught my eye.  The first one … Continue reading

Posted in America Invents Act, covered business methods, Future of PTAB Trial Practice, inter partes review, Joinder Post AIA, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , | Leave a comment

Federal Circuit Dismisses Appeals by Petitioners Who Were Denied Inter Partes Reviews

The Federal Circuit issued two orders on April 24, 2014 dismissing appeals by petitioners in proceedings where the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR).  Each appeal is summarized as follows: St. Jude Medical, … Continue reading

Posted in 315(b) One Year Bar, America Invents Act, claim challenges, Federal Circuit, inter partes review, Litigation, Mandamus Actions in the Federal Circuit, Patent Reform, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , | Leave a comment

Eastern District of Texas Denies SAP’s Motion to Vacate the Judgment in the Versata Patent Infringement Case

SAP recently learned that the Eastern District of Texas denied its motion to set aside or stay a district court judgment in favor of Versata for infringement of its U.S. Pat. 6,553,350 (Versata Software, Inc v. SAP America, Inc., No. 2:07-cv-00153 … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Federal Circuit, patent-eligible subject matter, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Stay in Federal Circuit, Uncategorized | Tagged , , , , , , , , , | Leave a comment

Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

A petition for covered business method review, inter partes review, or post-grant review may  be filed on behalf of of several different parties and real parties in interest.  Typically, such filings involve one, two, or three named persons (e.g., companies) … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Comments Off on Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

Board Proposes Solution for Petitioner if Expert Witness Not Available for Deposition in Patent Office Trial

In current post-grant practice, most petitions are accompanied by an expert declaration to support the assertions made by the petitioner.  If the petitioner successfully obtains institution of a patent office trial (inter partes review, covered business method patent review, or … Continue reading

Posted in covered business methods, Expert Witnesses, inter partes review, Post Grant Review, PTAB, Uncategorized | Tagged , , , , , , , , , , , , , , , , , , , | Leave a comment