Category Archives: PTAB Patent Trials

Eastern District of Texas Denies SAP’s Motion to Vacate the Judgment in the Versata Patent Infringement Case

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

Join Me in San Francisco for PLI’s Post-Grant CLE Program on April 28

I will be presenting at PLI’s “USPTO Post-Grant Patent Trials 2014” CLE Program on April 28th with a number of other post-grant practitioners. Please join us there or attend via webinar! — Timothy Bianchi

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , | Comments Off on Join Me in San Francisco for PLI’s Post-Grant CLE Program on April 28

Patent Office Board Clarifies Petitioner Role for Single Petition by Several Companies

A petition for covered business method review, inter partes review, or post-grant review may  be filed on behalf of of several different parties and real parties in interest.  Typically, such filings involve one, two, or three named persons (e.g., companies) … Continue reading

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Litigation Defendants Cannot Rely on Joinder to Avoid Timing Requirements of Inter Partes Reviews

In my last post, we explored the interplay of the one-year bar under 35 U.S.C. § 315(b) and joinder in inter partes review (IPR) proceedings.  That case involved a Petitioner who could not have filed an IPR petition prior to the … Continue reading

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Joint Motions to Terminate Patent Reviews Late in Trial Proceedings

One of the advantages of patent reviews under the America Invents Act is that the parties may settle before completion of the proceedings and file a joint motion to terminate these proceedings.  The Patent Trial and Appeal Board (PTAB or … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Post Grant Review, PTAB, PTAB Patent Trials, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , | 1 Comment

CLE Event: Review of First Year of Patent Office Trials

The America Invents Act provides us several new ways to challenge issued patents. If you are curious about what we have learned in this first year fourteen months of patent office trials, please tune into my hour webinar tomorrow morning (Dec. … Continue reading

Posted in America Invents Act, covered business methods, Depositions, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA | Tagged , , , , , , , , , , , , , , , | Leave a comment

Parties Terminate CBM Before They Settle Dispute to Avoid PTAB Decision

In January of 2013, EZ Shield , Inc sued Harland Clarke Corp. for infringement of U.S. Pat. 8,346,637.  The ‘637 patent relates to a system for reimbursement of consumers  for losses incurred for specific forms of check fraud.  In April … Continue reading

Posted in America Invents Act, covered business methods, Litigation, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

USPTO to Host AIA Second Anniversary Forum on Sept. 16

The USPTO will host an AIA Second Anniversary Forum on September 16, 2013, at the USPTO’s Alexandria campus in the Madison Auditorium from 1 to 5 pm, and also via webcast.  Here is the USPTO announcement: At the Forum, USPTO … Continue reading

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

PTAB Provides More Guidance on Discovery

On March 5, 2013, the Patent Trial and Appeal Board (PTAB or Board) provided guidance to the bar concerning routine discovery and additional discovery.  (See paper 26 in Garmin v. Cuozzo, IPR2012-00001) This decision set forth five factors which are important in … Continue reading

Posted in Depositions, Expert, Federal Circuit, Future of PTAB Trial Practice, inter partes review, Litigation, motion practice, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , , , , , , , , , | 1 Comment

PTAB Authorizes SAP to file Opposition to Versata’s Rehearing Request

Even though the Rehearing Request filed by Versata last week is confidential, we can glean some insight about what it contained based on the publicly available documents of record.  Today the PTAB authorized SAP to file its motion to oppose … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Federal Circuit, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, rehearing request, statutory subject matter, Stay in Federal Circuit | Tagged , , , , , , , , , , , , , , , | Leave a comment