Tag Archives: Tim Bianchi

A Split Panel of the Federal Circuit Reverses PTAB Finding of Unpatentability Without Remand in DSS v. Apple

In DSS Technology Management v. Apple Inc., a split panel of the Federal Circuit reversed a finding of patentability by the Patent Trial and Appeal Board (PTAB or the Board), but did so without remanding the case back to the … Continue reading

Posted in claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, inter partes review, IPR, prior art, Reversal With No Remand | Tagged , , , , , , , , , , , | Leave a comment

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

10 Minute Webinar on IPR Claim Amendments In View of Aqua Products

If you are interested in knowing more about amendments in IPR proceedings and the practical impact of the Federal Circuit’s en banc Aqua Products decision, click here to view a brief 10 minute presentation.

Posted in Aqua Products, Federal Circuit Review of PTAB Proceedings, inter partes review, Motion to Amend, PTAB, Uncategorized, Webinar | 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

Shire’s Granted Motion to Amend Offers Additional Insight Into PTAB Amendment Practice

When a patent undergoes review at the Patent Trial and Appeal Board (“PTAB”), the Patent Owner has an opportunity to file a motion to amend claims so that a substitute claim can be proposed for each claim sought to be amended. … Continue reading

Posted in claim challenges, inter partes review, Motion to Amend, prior art, PTAB, Uncategorized | Tagged , , , , , , , , , , , , | Leave a comment

ChanBond Avoids Institution of Six Cisco IPR Petitions

ChanBond sued several cable company defendants alleging patent infringement of three wideband signal distribution system patents in the District of Delaware in 2015.  The defendants included Atlantic Broadband Group, Bright House Networks, Cable One, Cablevision, Cequel Communications, Charter Communications, Comcast … Continue reading

Posted in 315(b) One Year Bar, Broadest Reasonable Interpretation standard, Claim Construction, inter partes review, Litigation, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , | Leave a comment

PTAB Narrows Its Preliminary Claim Interpretation To Uphold Cellular Patent

In July, 2014 Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) petitioned for inter partes review of claims 1, 2, 8-12 and 18-22 of U.S. Patent No. 7,787,431 owned by Intellectual Ventures II  LLC (“IV”).  In February, 2015, the Board instituted … Continue reading

Posted in Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Expert Witnesses, inter partes review, prior art, PTAB, Uncategorized | Tagged , , , , , , , , | Leave a comment

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take charge” approach to … Continue reading

Posted in America Invents Act, claim challenges, Claim Construction, Damages, Future of PTAB Trial Practice, inter partes review, Litigation, Post Grant Review, preponderance of evidence, prior art, PTAB, PTAB Patent Trials, Uncategorized | Tagged , , , , , , , , , , , , , , | Leave a comment

PTAB Dismisses Three IPR Petitions Based on Sovereign Immunity

Covidien LP had a license to U.S. Patent 7,062,251, owned by the University of Florida Research Foundation (UFRF, Patent Owner).  UFRF alleged breach of contract by Covidien, and sued Covidien in Florida state court for breach of license.  Covidien counterclaimed … Continue reading

Posted in Adjudicative instead of examinatorial, inter partes review, States rights and sovereign immunity | Tagged , , , , , , , , , , , , , , | Leave a comment