Archive for the ‘Litigation’ Category
Monday, April 15th, 2013
In my last blog post I described the trial being held on Wednesday in the first covered business method (CBM2012-00001). The PTAB has provided the dial in information to listen in on the trial to be held at 2:00 p.m. eastern time. Paper 61 of the record states:
Based upon the facts presented, the Board exercises its discretion to make the April 17 hearing available to the public via in-person attendance as well as telephonically. Specifically, the hearing will be open to the public for in-person attendance on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia. Space is limited as both parties have requested additional reserved seating and in-person attendance will be accommodated on a first come first serve basis. The following telephone number, meeting ID number and password are provided for those members of the public who wish to listen telephonically to the hearing:
(571) 270-3000
meeting ID number 28001#
password 7448#
The Board will provide a stenographer for the hearing and the reporter’s transcript will constitute the official record of the hearing.
Fortunately, the parties have not objected to the broadcast of the trial. This is exceptionally helpful, because a large turnout of the bar is expected to witness this first patent trial, and the courtrooms at the PTO cannot accommodate the numbers expected. This is history in the making.
Tags:Bianchi, CBM, claims, covered business method, patent trial and appeal board, PTAB, Tim Bianchi
Posted in America Invents Act, covered business methods, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, Uncategorized | No Comments »
Sunday, April 14th, 2013
The first ever covered business method patent review stems from a patent litigation between Versata and SAP over two Versata patents relating to pricing products in mulitlevel product and organizational groups. The district court action began in 2007 when Versata sued SAP for alleged infringement of its U.S. Patent Nos. 6,553,350 and 5,878,400 (Versata Software, Inc v. SAP America, Inc., No. 2:07-cv-00153 (E.D. Tex)).
A first jury trial was held in 2009, and a second jury trial was held in 2011. In the first trial, the jury found both patents directly infringed and inducement of infringement of one claim of the ‘350 patent. Shortly after the first trial, the Court granted JMOL of noninfringement of the ‘400 patent. A second trial was held on the ‘350 patent and a jury found the ‘350 patent infringed, resulting in a $392 million judgment and an injunction dated September 9, 2011 (stayed pending appeal).
SAP filed its petition for covered business method patent review on the first day it was available via the AIA: September 16, 2012. The petition included grounds for challenging the ‘350 patent under 35 USC §§ 101, 112, and 102.
About a month later, SAP filed a notice of appeal of the district court decision in the Federal Circuit (filed on October 11, 2011). Briefing was completed some months later, and oral arguments were held on February 4, 2013. About a month before the oral arguments (January 9, 2013), the PTAB instituted trial on the challenges under 35 USC §§ 101 and 102, but declined review on the challenges under 35 USC § 112. So as of January, 2013, the dispute was being pursued both in the Federal Circuit and in the PTAB.
Based on a series of communications between the parties and the PTAB, SAP agreed to drop its challenge under 35 USC § 102 in exchange for an expedited trial on its challenges under 35 USC § 101. That trial is scheduled for Wednesday April 17, 2013, where both parties will get an hour to present their arguments concerning 35 USC § 101.
Versata took one further action to challenge the covered business method review by suing the PTO in the Eastern District of Virginia on March 13, 2013. Versata Development Group, Inc. v. Rea, 1:13-cv-00328-GBL-IDD (E.D. VA). Versata alleges that the ‘350 patent is not a covered business method patent, and therefore the PTO violated its statutory authority by institution of the review proceeding. Versata also alleges that the PTO has no authority to entertain challenges to the claims of the ‘350 patent under 35 USC § 101, and that the PTO exceeded its statutory authority by institution of the review proceeding on this ground.
So there is a race to final decision between the district court action and the PTAB proceeding, and Versata’s suit of the PTO may drive the final outcome. Johann von Goethe was quoted as saying “Every second is of infinite value.” Perhaps that is more true than ever for SAP and Versata. It will be interesting to see how this story unfolds this week and in the months to come.
Tags:appeal, Bianchi, CBM, CBM2012-000001, covered business method, federal circuit, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, petition, PTAB, SAP v. Versata, Tim Bianchi
Posted in America Invents Act, claim challenges, covered business methods, indefiniteness, Litigation, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA, statutory subject matter, Uncategorized | 1 Comment »
Tuesday, November 6th, 2012
In the first covered business-method patent review ever filed (CBM2012-000001), SAP America and Versata Development Group are in a dispute as to whether a litigation attorney for Versata should be admitted pro hac vice in the PTAB trial. Apparently there is concern by SAP’s counsel about the attorney’s participation, because the Versata litigator was exposed to sensitive information, including information about SAP’s products, covered under a protective order in the earlier litigation (currently on appeal before the Federal Circuit). SAP is concerned that the sensitive information (which it asserts is more than is publicly known), would give Versata an unfair advantage in the trial.
In an order entered November 1, 2012 as paper no. 16, the PTAB summarized the arguments and requested further information about the protective order from the parties before making a final determination:
SAP Opposes Versata’s request. SAP Opposition to Motion for Pro Hac Vice Admission, Paper 15. SAP states that Mr. Cole, as trial counsel in the related litigation, gained access to highly confidential and proprietary information about SAP and its products. The use of this information is said to be governed by a protective order from the district court. SAP expressed a concern that Mr. Cole’s participation in both the district court litigation and the review proceeding puts him in a position where he could affect the scope of the claims of the ’350 patent while knowing how SAP’s products operate beyond that publically known. Id. at 2. SAP also represents that:
[A]llowing Mr. Cole to participate in this proceeding could effectively circumvent the restrictions of the underlying district court’s protective order, which precludes litigation counsel’s use of any SAP protected materials beyond the scope of that litigation.
Id. at 3.
In addition to Mr. Cole, Versata also seeks to employ expert witnesses in this proceeding that had access to SAP’s confidential information in the related litigation. SAP again sought to oppose this reliance representing that the protective order in the related litigation precluded the use of experts and consultants that received information under the district court protective order in proceedings before the Office.
Versata sought to allay SAP’s concerns by stating that they would not seek to file a motion to amend in this proceeding. The Board appreciates Versata’s attempt to lessen any potential prejudice to SAP should Versata be authorized to rely upon Mr. Cole and the requested experts. The Board however, has reviewed Versata’s motion for pro hac vice and has determined that it requires further information regarding the protective order to better understand what, if any, impact the district court’s protective order has upon this proceeding.
Versata’s offer to forego amendment is directed to a frequent concern of patent owners in reexamination proceedings who seek to bar litigation counsel with access to protected information from participating in prosecution activities. But in responsive briefing, SAP identified a concern beyond mere amendment of the ‘350 patent:
Regarding Section I.c of the Board’s Order, Versata’s offer not to amend its claims does not allay SAP’s concerns regarding participation by Versata’s lead trial counsel in this proceeding. It is well established that, with or without a formal amendment, statements and arguments made during post-grant proceeding can change the meaning of a claim term, and thus scope of that claim. See Marine Polymer Technologies, Inc. v. Hemcon, Inc. 672 F.3d 1350, 1363-64 (Fed. Cir. 2012) (en banc); Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed.Cir.2011); CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1362– 63 (Fed.Cir. 2007). Thus, even if Versata does not amend its claims, Mr. Cole can still influence the scope of Versata’s claims through his participation in this proceeding.
It is now up the PTAB to make a decision in this dispute. It will be interesting to see how that PTAB uses the information concerning the protective order to decide this matter. We will all stay tuned.
Tags:appeal, Bianchi, CBM, claims, covered business method, federal circuit, patent, patent claims, patent litigation, patent reform, petition, PTAB, reexam, reexamination, Tim Bianchi
Posted in America Invents Act, Claim Construction, covered business methods, Litigation, Patent Reform, Post Grant Review, Prosecution Bar, PTAB, reexamination generally, Uncategorized | No Comments »
Saturday, October 20th, 2012
The AIA provides new post-issuance proceedings to challenge issued patents. But can these challenges be used to stop related pending patent prosecution dead in its tracks? One recent inter partes review petition requests just that and time will tell whether the PTAB takes control of the related applications.
Chi Mei Innolux Corp. (CMI) filed a petition for inter partes review of U.S. Pat. No. 6,404,480 on October 19, 2012. The ‘480 patent is owned by Semiconductor Energy Laboratory Co., Ltd. (SELC). SELC sued CMI for patent infringement in a suit styled Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed on January 5, 2012.
The other patents-in-suit in the litigation are U.S. Patents 7,876,413; 7,697,102; 7,956,978; 8,068,204; and 7,923,311. CMI has indicated that it will be filing petitions for inter partes review of these other patents-in-suit as well, and CMI hopes to have the resulting PTAB trials consolidated with the PTAB trial instituted for the present ‘480 inter partes review.
The family of patents and applications is shown in the following graphic:
Things get very interesting when CMI identifies the 12/257,514 and 12/257,521 applications as “involved applications” and requests a stay of prosecution of these involved applications:
37 C.F.R. 42.3 conveys exclusive jurisdiction to the PTAB over every involved application and patent during the proceeding, as the Board may order. See 35 U.S.C. 6 (b), as amended, 35 U.S.C. 326(c), and Public Law 112–29, section 18. The term “proceeding” is defined by 37 C.F.R. 42.2 as a trial or preliminary proceeding. Rule 42.2 also defines the term “preliminary proceeding” as beginning with the filing of an IPR petition. To this end, the PTAB now has jurisdiction over the following involved applications. [see graphic above]
Divisional applications 12/257,514 and 12/257,521 are actively being prosecuted before Art Unit 2871. As the family of applications claiming priority to the ‘480 patent remain active, these applications may be utilized as a basis to present patentably indistinct claims, and, may, if allowed to continue, proceed to issuance prior to the determination of the PTAB in this IPR. The issuance of such indistinct claims during the pendency of this IPR is at least inconsistent with 37 C.F.R. 42.373(d)(ii), and, would provide an “end-around” the reasonable number of substitute claims that may be presented in this proceeding. As such, further USPTO processing of these proceedings may prejudicial to the Petitioner’s interests and inconsistent with controlling PTAB rules. Petitioner respectfully submits that it is appropriate under the circumstances for the PTAB to suspend, sua sponte, further prosecution of the above noted applications, or at least require any further patent application filings, or claim changes be authorized by the PTAB prior to submission to the USPTO.
CMI is correct that the PTAB may acquire jurisdiction of involved patents and applications. 37 C.F.R. § 42.3 states:
(a) The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.
(b) A petition to institute a trial must be filed with the Board consistent with any time period required by statute.
Since “involved” means an application, patent, or claim that is the subject of the proceeding, it will be interesting to see whether the PTAB decides to order control of the pending applications as requested by CMI.
Creative attempts to use the AIA to challenge patents, such as this one, have only begun. Many more will come. The complexities of these challenges raise the stakes for patent owners. They must now reconsider how they choose their patent counsel to make sure they understand not only how to make patent rights that will survive prosecution and litigation, but also rights that will survive reexamination and post-grant review proceedings.
Tags:Bianchi, claims, ex parte prosecution, inter partes review, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent prosecution, patent reform, petition, PGR, PTAB, Tim Bianchi
Posted in America Invents Act, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, PTAB | No Comments »
Friday, October 19th, 2012
It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB.
Look at it this way to put things in perspective:
- The 47 petitions filed over this past month are just shy in number of the total number of inter partes reexamination requests filed in the first four years of the inter partes reexamination statute (only 53 total inter partes reexamination requests were filed in the years of 2000 to 2004 according to PTO statistics).
- If this rate of filing continues for the next 11 months, we could see about 500 petitions in the first year period, which is more than the 374 inter partes reexamination requests filed in 2011.
- Assuming we only see about 250 such petitions this year, that would roughly equate to the number of filings of inter partes reexamination requests filed in 2009 (258).
So regardless of how many filings are made over the year, AIA post-grant proceedings are off to a very fast start compared to the adoption of inter partes reexamination. This is interesting because there is obvious popularity despite enhanced filing fees, costs of preparation, and estoppel.
Tags:Bianchi, CBM, covered business method, inter partes reexamination, inter partes review, IPR, patent, patent reform, PGR, Post Grant Review, PTAB, Tim Bianchi
Posted in America Invents Act, covered business methods, estoppel, estoppel from administrative proceeding, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PRPS Patent Review Processing System, PTAB, reexamination generally, Uncategorized | No Comments »
Sunday, September 30th, 2012
A company called CoreLogic Solutions, LLC owns U.S. Patent No. 5,361,201, relating to a process for appraising real estate property. The ‘201 patent was filed on Oct. 19, 1992 and issued on Nov. 1, 1994. Absent some kind of patent term extension, the ‘201 patent will expire soon. The ‘201 patent is the subject of both a litigation and a covered business-method (CBM) patent review with an accused infringer/petitioner Interthinx, Inc. The litigation is CoreLogic Information Solutions, Inc. v. Fiserv, Inc., et al., Civil Action No. 2:10-CV-132-RSP (E.D. Texas). The CBM patent review is CBM2012-00007. Claim 1 of the ‘201 patent is as follows:
1. A computer-implemented process for appraising a real estate property, comprising the steps of:
-
collecting training data;
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developing a predictive model from the training data;
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storing the predictive model;
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obtaining individual property data for the real estate property;
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generating a signal indicative of an appraised value for the real estate property responsive to application of the obtained individual property data to the stored predictive model;
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developing an error model from the training data;
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storing the error model; and
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generating a signal indicative of an error range for the appraised value responsive to application of the individual property data to the stored error model.
PACER reveals a jury verdict form just entered in the Texas litigation on September 28, 2012, where Interthinx was found to not have infringed claims 1 and 10 of the ‘201 patent, and that Interthinx failed to show claims 1 or 10 invalid. This jury decision comes only 9 days after the CBM petition was filed in the USPTO/PTAB.
What will happen next is anyone’s guess. Interthinx may elect to wait and see if a CBM trial is instituted. It may settle with CoreLogic to avoid appeal. Or it may do a little of both. It may also pursue the CBM in an effort to challenge the patent and extinguish any possible reversal and remand by the Federal Circuit on appeal of the trial court action by CoreLogic.
If the CBM PTAB trial is pursued, it will be interesting to see how the PTAB regards a prior litigation decision, such as the one in this case, given the differences between administrative review and litigation. The differences in interpretive standards and burdens of proof are summarized in the slide below:
We already learned from cases such as In re Baxter International (Fed. Cir. 2012), that the PTO can find a patent unpatentable even after the Federal Circuit affirmed a lower court decision that the patent was not invalid. As stated in Baxter:
“[T]he PTO in reexamination proceedings and the court system in patent infringement actions “take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.’[citing Swanson, quoting Ethicon]”
But that does not mean that the PTAB trial judges will ignore district court decisions and that courts will ignore PTAB decisions. It remains to be seen how much one process defers to the other.
Tags:appeal, Bianchi, burden of proof, CBM, clear and convincing, covered business method, covered business method patent review, federal circuit, issued patent, litigation, patent, patent claims, patent reform, petition, PGR, Post Grant Review, PTAB, reexam, reexamination, Tim Bianchi
Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, indefiniteness, Litigation, motion practice, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, statutory subject matter | No Comments »
Saturday, September 29th, 2012
Liberty Mutual Insurance filed two more covered business method (CBM) patent review petitions dated September 29. The petitions both relate to U.S. Pat. No. 7,124,088 owned by Progressive Casualty Insurance, that relates to an on-line insurance policy service system as recited in claim 1 of the reexamined patent:
1. An on-line insurance policy service system comrprising:
a web browser for accessing remote insurance information by an insurance policyholder and software linked to the remote insurance information;
a publicly accessible distributed network for transferring data from the web browser;
an information module, remote from the web browser coupled to the publicly accessible distributed network, that identifies the insurance policyholder and verifies an insurance policy parameter of an existing insurance policy of the insurance policyholder in real-time in response to first data received from the insurance policyholder through the publicly accessible distributed network and the web browser;
where the first data comprises a personal security code that allows access to insurance policy parameters of the insurance policyholder;
an insurance policy adjustment module, remote from the web browser coupled to the publicly accessible distributed network, that adjusts the insurance policyholder’s insurance policy parameter in real-time in response to second data received from the insurance policyholder through the publicly accessible distributed network and the web browser,
where the second data comprises a selection of the insurance policy parameter;
where the insurance policy adjustment module provides an acknowledgement to the web browser in response to the adjustment of the selected insurance policy parameter within the existing insurance policy, and implements the adjustment to the existing insurance policy; and
where an insurer’s computer generates an insurance document customized to the insurance policyholder as identified by the personal security code and sends the customized insurance document to the web browser in response to the second data received from the insurance policyholder through the publicly accessible distributed network and the web browser.
Liberty Mutual’s petitions (CBM2012-00010 and CBM2012-00011) request review of the same claims, but using different prior art challenges. The petition for the 00010 matter at footnote 3 states:
As noted above, Petitioner has simultaneously filed an additional Petition seeking review and judgment against the same claims based on different art—including, e.g., the Peterson patent discussed (but mischaracterized) during reexamination. Petitioner acknowledges with appreciation the procedural guidance provided by the Lead Trial Judge and others at the Patent Trial and Appeal Board regarding the appropriateness of such a division of grounds under the transitional program. Petitioner further notes that the references cited in that petition in combination with those cited here, including in particular NAIC, ComputerGuard and Lockwood, would also render all claims obvious based on their disclosures cataloged in the furnished claim charts.
So it appears that Petitioner Liberty Mutual’s strategy is to file a separate review petition on separate prior art it alleges was mischaracterized in reexamination. The use of post-issuance review to “correct” assertions made in reexamination is an interesting approach that may gain momentum if successful in cases like these.
Another interesting observation from the Petition is the way that Liberty Mutual proffers interpretations of claim limitations that are arguably subject to 35 U.S.C. § 112(6). Liberty Mutual asserts differences between interpretive standards for review and reexamination (broadest reasonable interpretation or BRI per In re Yamamoto) and litigation (Phillips-type constructions, such as those used in Markman proceedings) in its petition. For example, starting on page 11 of the petition, Liberty Mutual states:
Pursuant to § 42.300(b), and solely for purposes of this review, Petitioner construes the claim language such that claim terms are given their broadest reasonable interpretation. For terms not specifically listed and construed below, and in the absence, to date, of detailed arguments from Progressive indicating a need for construction or a disagreement regarding the meaning of the vast majority of terms, Petitioner interprets them for purposes of this review in accordance with their plain and ordinary meaning under the broadest reasonable interpretation. Because this standard is different than that used in litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner expressly reserves the right to argue in litigation a different construction for any term as appropriate to that proceeding.
At footnote 8, the Petition adopts a “plain meaning” BRI approach to claim limitations that are arguably subject to 35 U.S.C. § 112(6):
Petitioner reserves the right to argue in an appropriate forum that, under the standards of construction appropriate to district court litigation, these claim terms should be construed as means-plus-function limitations under § 112(6) and, indeed, fail to meet the requirements for means-plus-function limitations under § 112(6). For purposes of this Review, however, Petitioner broadly construes these terms as required by the applicable standard. See § 42.300(b).
This comment assumes that a claim limitation that is subject to 35 U.S.C. § 112(6) is properly interpreted using “plain meaning” according to BRI, and that BRI may be different than a Phillips-type construction used in court proceedings for mean-plus-function limitations. It will be interesting to see whether Patent Owner (Progressive) will have something to say about that assumption in its response.
Tags:Bianchi, CBM, claims, correcting reexamination using post issuance review, covered business method, ex parte reexamination, patent reform, PGR, reexam, reexamination, Tim Bianchi
Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, correcting reexamination using post-issuance review, covered business methods, inequitable conduct, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, reexamination generally | No Comments »
Thursday, September 27th, 2012
As of 01:00 on September 27, the number of petitions for covered business method (CBM) patent reviews remained at 6, but five more petitions for inter partes reviews (IPRs) were filed, making a total of 17 IPRs. The total number of pending potential trials is now at 23 (actual trials have not be instituted yet, as these are still preliminary proceedings and the Board must decide whether they meet the requisite standard).
The most recent filings were by Sony (IPR2012-00033), Nissan North America (IPR2012-00037 and IPR2012-00035), and Synopsys, Inc. (IPR2012-00042 and IPR2012-00041).
Some of these recent filings are petitions for review of relatively few claims. In certain matters grounds for unpatentability under 35 US.C. § 102 are made, with backstop arguments under 35 US.C. § 103. In some such cases, the obviousness rejections are not supported by declaration evidence, so the Petitioner must feel fairly confident in the scope of the cited prior art. When few claims are presented for review, more detailed assertions of prior art can be made in the 60 page maximum for the petition. See IPR2012-00035 for one such example. Of course, it is too early to tell if the Board will institute an inter partes review using such an approach and whether the Petitioner’s approach will be ultimately sucessful. But time will tell, unless such matters settle before proceedings go further.
Tags:Bianchi, inter partes review, patent, patent claims, PGR, Post Grant Review, PTAB, Tim Bianchi
Posted in America Invents Act, claim challenges, Claim Construction, covered business methods, Damages, estoppel, future damages, inter partes review, intervening rights, Litigation, motion practice, Patent Reform, Post Grant Review, preponderance of evidence, PRPS Patent Review Processing System, PTAB, raised or reasonably could have raised | No Comments »
Friday, September 21st, 2012
Today I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company. A PDF of our joint presentation is found here.
The presentation provides a comparison between IPR (inter partes review), PGR (post grant review), and CBM (covered business method) patent review. It contrasts these proceedings to ex parte reexamination (EPX). The goal was to present the available options for review of patents now that inter partes reexamination is no longer available.
The presentation further covered administrative trials in the PTAB. A hypothetical was used to demonstrate the use of litigation, IPR, PGR, CMB, and EPX depending on strength of 35 USC § 101 and § 112 arguments as opposed to 35 USC § 102 and § 103 prior art invalidity arguments. Different scenarios were used to demonstrate the complexity of the analysis.
My thanks to Kevin Rhodes and 3M for allowing me to post these slides.
Tags:Bianchi, CBM, claims, clear and convincing, estoppel, inter partes reexamination, inter partes review, IPR, litigation, patent litigation, patent reform, petition, PGR, Post Grant Review, PTAB, reexam, reexamination, SNQ, substantial new question of patentability, Tim Bianchi
Posted in America Invents Act, Broadest Reasonable Interpretation standard, Claim Construction, clear and convincing evidence, covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, indefiniteness, inter partes reexamination, inter partes review, Litigation, motion practice, Patent Reform, patent-eligible subject matter, petitions practice, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, statutory subject matter, supplemental examination | 1 Comment »
Tuesday, September 18th, 2012
If you are monitoring adoption of post-issuance filings you may have noticed that five more IPR filings were filed on the second day of operation of the PTAB trials portal pursuant to the new IPR and CBM patent review options from the America Invents Act. The list of today’s filings is reproduced below:
4 IPRs were filed by Intellectual Ventures Management, LLC and one by Ariosa Diagnostics. This brings the total count to 13 pending petition matters (10 IPRs and 3 CBMs) on the petitions docket.
It is interesting to note different styles presented by the petitioners in the various petitions. Some rely more on declaration evidence than others. Some include substantial legal background for positions taken and some are more direct and pointed in arguing their positions.
It is also interesting to see the way that claim construction is being postured in these early petition filings. For example, for matters that are in more advanced stages of litigation petitioners have resorted to admissions by the patent owner and Markman decisions for proposed claim constructions. In a presentation to our local bar I predicted that PGR, IPR, and CBM would provide a kind of intermediate state of claim interpretation somewhere between BRI and a Phillips-type construction. I believe that is starting to take shape as evidence from both prosecution and district court is relied upon for claim construction proposals.
It is encouraging to see highly technical arguments being pursued in these early filings. For example, CBM (and PGR in general) may provide an attractive vehicle to challenge statutory subject matter and indefiniteness before the PTAB, as opposed to making these challenges in district court litigation. The patent community may well embrace these post-grant proceedings if it sees consistently high quality decisions by the PTAB.
Tags:Bianchi, CBM, claims, covered business method, indefiniteness, inter partes review, IPR, issued patent, litigation, patent prosecution, patent reform, petition, PGR, Post Grant Review, PTAB, statutory subject matter, Tim Bianchi
Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, covered business methods, Ex Parte Prosecution, indefiniteness, inter partes review, Litigation, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, PTAB, statutory subject matter | No Comments »
