Category: Litigation
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More Inter Partes Patent Reviews Filed on the PTAB PRPS
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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 raisedAs 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…
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Comparative Study of Post Issuance Review Options
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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 examinationToday 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…
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More IPR Filings on Day 2
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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 matterIf 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…
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Preissuance Submission Final Rules Published July 17, 2012
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in America Invents Act, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, preissuance submissions by third parties, reexamination generally, Substantial New Question (SNQ), UncategorizedThe Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).
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Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part II
In Part I of this topic, I posted some of the reasons why the Patent Office has taken the position that the broadest reasonable interpretation (BRI) standard should be used in post-grant review and inter partes review. Yet another reason for use of BRI (as opposed to a district court construction) was provided by Director Kappos in recent…
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Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I
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in America Invents Act, Broadest Reasonable Interpretation standard, clear and convincing evidence, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, reexamination generally, Reissue, UncategorizedToday, USPTO Director David Kappos posted a comment advocating the use of the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act. This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different…
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En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening Rights
In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc. On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ‘245 patent based on actions taken in a reexamination proceeding. That opinion was vacated and…
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Declaratory Judgment Plaintiff and Stays Pending Reexamination
In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents in suit. BACKGROUND Vertical owns U.S. Pat. Nos. 6,826,744 and 7,716,629 relating to Internet technologies.…
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IPO Article on Misjoinder
My last post was on the America Invents Act amendments to 35 U.S.C. 299 affecting joinder in patent infringement actions. If you are interested in that topic, you should see an article reported in today’s IPO Daily News. The article was written by Scott Burt from Jones Day, Barry F. Irwin from Kirkland & Ellis…
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America Invents Act Impacts Joinder in Patent Infringement Cases
The America Invents Act brought a lot of changes for patent attorneys. This post will discuss the impact of Section 19 of the Act on joinder of parties in litigation. The amendments to 35 U.S.C. § 299 provide that joinder of defendants shall not be permitted “solely on allegations that they have infringed a patent…