Category Archives: Ex Parte Prosecution

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular … Continue reading

Posted in America Invents Act, Damages, estoppel, Ex Parte Prosecution, ex parte reexamination, future damages, inter partes reexamination, inter partes review, Litigation, past damages, Patent Reform, Post Grant Review, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , , , , , , , , , , | Leave a comment

Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes

Pre-Issuance Challenge Option Added Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122.  Written submission of the relevance of a patent application,  patent, published patent application, or other printed publication must … Continue reading

Posted in America Invents Act, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Patent Reform, Post Grant Review, preissuance submissions by third parties, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , | 3 Comments

Can Post Grant Review Enhance Patent Quality?

We have all heard about the new post grant review (PGR) aspect of the patent reform legislation.  It is supposed to provide a mechanism for review of the patent initiated in the first year of the patent’s issue.  Please indulge me for … Continue reading

Posted in Damages, Ex Parte Prosecution, Litigation, Post Grant Review, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , | 2 Comments

Petition Granted for Rehearing en banc of Akamai Technologies v. Limelight Networks

On April 20, 2011, the Federal Circuit granted the petition by Akamai Technologies for rehearing en banc its appeal in Akamai Technologies, Inc. v. Limelight Networks, Inc.  The order vacated the earlier opinion of December 20, 2010.  The order includes … Continue reading

Posted in Ex Parte Prosecution, joint infringement, Litigation, Uncategorized | Tagged , , , , , , , , , , , , , | Leave a comment

Federal Circuit Decision in In re Tanaka

You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post.  On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion.  … Continue reading

Posted in Damages, doctrine of claim differentiation, Ex Parte Prosecution, intervening rights, Litigation, past damages, Reissue, Uncategorized | Tagged , , , , , , , , , , , , , , , , , , | Leave a comment

Petitions Practice for SNQ Findings in Inter Partes Reexaminations

A prior post emphasized the importance of a well crafted petition in cases where the examiner determines that there is no SNQ in an inter partes reexamination request.  Recall that the BPAI determined it had no jurisdiction to review of a determination that there was no … Continue reading

Posted in Appealable, Ex Parte Prosecution, inter partes reexamination, petitions practice, Procedural - Petitionable, reexamination generally, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , , , , , , , | Leave a comment

Microsoft v. i4i – Part III: Changing the Presumption of Validity: Impact on Reexamination Practice

Posted March 14, 2011 The prior post discussed only some of the many options the Supreme Court has in the Microsoft v. i4i case (i4i).  In summary, the presumption of validity of a patent as we currently know it may … Continue reading

Posted in Ex Parte Prosecution, Litigation, reexamination generally, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , | Leave a comment

Microsoft v. i4i – Part II: The Supreme Court’s Many Options

Posted March 6, 2011 The previous post included a summary of the facts from the Microsoft petition for certiorari.  The Supreme Court has several options when deciding the outcome of this case.  It can maintain the Federal Circuit’s existing presumption … Continue reading

Posted in Ex Parte Prosecution, Litigation, reexamination generally | Tagged , , , , , , , , , | 2 Comments

Microsoft v. i4i and the Presumption of Validity – Part 1

Posted March 5, 2011 In Microsoft v. i4i, which has been granted certiorari by the Supreme Court, Microsoft’s position is that the presumption of validity should not be enjoyed by a patent owner for prior art not considered by an … Continue reading

Posted in Ex Parte Prosecution, Litigation, reexamination generally | Tagged , , , , , , , , , | 1 Comment

Patent Law Reform or Just Patent Law Change???

There is a lot of talk about the various patent reform bills that have been proposed as of late, like S.23.  Phrases like “patent reform” sound great, but are these proposed bills patent law reform or merely patent law change?  If you … Continue reading

Posted in Ex Parte Prosecution, Uncategorized | Tagged , | Leave a comment