Author Archives: Tim Bianchi

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

Posted on October 2, 2014 by Tim Bianchi

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

Posted on September 30, 2014 by Tim Bianchi

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

Posted on August 29, 2014 by Tim Bianchi

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

Judge Rader to Retire from the Federal Circuit

Posted on June 16, 2014 by Tim Bianchi

Judge Rader announced his plans to retire from the Federal Circuit at the end of this month. Different sources are reporting that he has indicated an interest in teaching intellectual property to students in various countries. This will also allow … Continue reading →

Posted in Uncategorized | Leave a comment

Chief Judge Rader Stepping Down from Chief Judge Position, but Still Serving as CAFC Judge

Posted on May 23, 2014 by Tim Bianchi

From the U.S. Court of Appeals for the Federal Circuit Web Page: CHIEF JUDGE RANDALL R. RADER TO STEP DOWN AS CHIEF JUDGE ON MAY 30, 2014 Chief Judge Randall R. Rader today announced his intention to step down as … Continue reading →

Posted in Uncategorized | Leave a comment

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

Posted on May 14, 2014 by Tim Bianchi

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

See You at the AIPLA 2014 Spring Meeting!

Posted on April 30, 2014 by Tim Bianchi

I am presenting at the AIPLA Spring Meeting on May 15, 2014 in Philadelphia and hope to see you there.  My task is to provide strategies for filing inter partes reviews, covered business method reviews and post-grant reviews.  I hope … Continue reading →

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review | Tagged , , , , , , , , , , , | Leave a comment

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

Posted on April 25, 2014 by Tim Bianchi

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

Posted on April 24, 2014 by Tim Bianchi

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

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

Posted on April 21, 2014 by Tim Bianchi

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