Tag Archives: reexamination

Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic

A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings.  In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of … Continue reading

Posted in America Invents Act, BRI v. Phillips Construction Issues, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Claim Preclusion, Federal Circuit Review of PTAB Proceedings, inter partes reexamination, Issue Preclusion, ITC, prior art, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , | Leave a comment

PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities

Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights.  In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs … Continue reading

Posted in inter partes review, motion practice, PTAB, serial petitions, States rights and sovereign immunity, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

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

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

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

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

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

Eastern District of Virginia Decides PTAB Decision to not institute IPR is Not Appealable

A patent owner insists that your company infringes a patent and makes a claim of patent infringement.  You have settled patent infringement assertions before, but this patent seems invalid over known prior art.  You consult with your patent counsel and … Continue reading

Posted in America Invents Act, inter partes review, Mandamus Actions in the Federal Circuit, Patent Reform, PTO Sued Under the APA, Uncategorized | Tagged , , , , , , , , , , | 1 Comment

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 , , , , , , , , , , , , , , , , , | 1 Comment

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 , , , , , , , , , , , , , | Leave a comment