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Tag Archives: Post Grant Review
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 Bianchi, CBM, covered business method, Cross examination, Declaration, Deposition, ex parte reexamination, Expert, inter partes review, IPR, patent, patent reform, patent trial and appeal board, PGR, Post Grant Review, PTAB, substitute declaration, substitute petition, Testimony, Tim Bianchi
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SAP’s Cert Petition Denied by Supreme Court in Versata Patent Infringement Suit
In earlier posts, I described the $391 million patent infringement judgment awarded to Versata for SAP’s alleged infringement of US Pat. 6,553,350. I also detailed SAP’s attempts to avoid the judgment by challenging the ‘350 patent in the first covered business … Continue reading
Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, petitions practice, Post Grant Review, software patents, Uncategorized
Tagged appeal, Bianchi, CBM, claims, covered business method, damages, federal circuit, issued patent, litigation, patent litigation, patent trial and appeal board, PGR, Post Grant Review, PTAB, stay, Supreme Court, Tim Bianchi
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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 Bianchi, CBM, claims, covered business method, ex parte reexamination, inter partes reexamination, inter partes review, IPR, patent, patent claims, patent trial and appeal board, PGR, Post Grant Review, PTAB, Tim Bianchi
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Parties Terminate CBM Before They Settle Dispute to Avoid PTAB Decision
In January of 2013, EZ Shield , Inc sued Harland Clarke Corp. for infringement of U.S. Pat. 8,346,637. The ‘637 patent relates to a system for reimbursement of consumers for losses incurred for specific forms of check fraud. In April … Continue reading
Posted in America Invents Act, covered business methods, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, Termination of Post-Grant Proceedings
Tagged Bianchi, CBM, covered business method, ex parte reexamination, issued patent, litigation, motion to stay, patent, patent claims, patent litigation, patent reform, patent trial and appeal board, Post Grant Review, PTAB, reexam, reexamination, termination, Tim Bianchi
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PTAB Provides More Guidance on Discovery
On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery. (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in … Continue reading
Posted in Depositions, Expert, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, motion practice, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials
Tagged appeal, Bianchi, BPAI, CBM, claims, federal circuit, inter partes review, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, PGR, Post Grant Review, PTAB, Tim Bianchi
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SAP Joins PTO against Versata in Eastern District of Virginia
You may recall that Versata sued the Patent Office in the Eastern District of Virginia to challenge the PTAB’s decision to institute a CBM review of Versata’s U.S. 6,553,350 patent. Versata Development Group, Inc. v. Rea, 1:13-cv-00328-GBL-IDD (E.D. VA). It turns out … Continue reading
Posted in America Invents Act, covered business methods, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA
Tagged Bianchi, CBM, covered business method, federal circuit, patent, patent claims, patent litigation, patent reform, patent trial and appeal board, PGR, Post Grant Review, reexam, reexamination, Tim Bianchi
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Joinder in Patent Office Proceedings Clarified by PTAB
Several posts ago we explored how the Board perceived joinder of a subsequent petition filed by a petitioner to an ongoing proceeding. A recent ruling by the Patent Trial and Appeal Board (PTAB) clarifies how the Board views joinder of … Continue reading
Posted in America Invents Act, covered business methods, inter partes review, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Post Grant Review, PTAB, PTAB Patent Trials
Tagged Bianchi, CBM, covered business method, inter partes review, IPR, joinder of parties post-petition, patent trial and appeal board, PGR, Post Grant Review, PTAB, Tim Bianchi
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AIA Post-Grant Practice Rapidly Integrates Federal Circuit and Board Decisions
AIA post-grant practice has many advantages over other proceedings, but one of the great benefits of AIA post-grant practice that we have not discussed is the speed in which AIA post-grant proceedings adopt recent patent decisions from different sources. This … Continue reading
Posted in America Invents Act, claim challenges, covered business methods, estoppel, Ex Parte Prosecution, Litigation, Patent Reform, patent-eligible subject matter, petitions practice, Post Grant Review, PTAB, PTAB Patent Trials
Tagged Bianchi, CBM, claims, covered business method, estoppel, federal circuit, issued patent, litigation, patent, patent claims, patent litigation, patent reform, patent trial and appeal board, petition, PGR, Post Grant Review, PTAB, Tim Bianchi
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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 appeal, Bianchi, CBM, covered business method, ex parte reexamination, federal circuit, inter partes reexamination, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, petition, PGR, Post Grant Review, PTAB, reexam, reexamination, Tim Bianchi
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