Tag Archives: CBM

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

USPTO Statistics Show Inter Partes Patent Reviews are Frequently Settled Before Final Board Decision

The U.S. Patent Office regularly posts statistics on post-grant proceedings such as inter partes review and covered business method patent review.   An excerpt of PTAB statistics for February 13, 2014 is found below.  The acronyms “FWD” and “RAJ” stand … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Litigation, Patent Reform, Post Grant Review, PTAB, Termination of Post-Grant Proceedings, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

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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Board Proposes Solution for Petitioner if Expert Witness Not Available for Deposition in Patent Office Trial

In current post-grant practice, most petitions are accompanied by an expert declaration to support the assertions made by the petitioner.  If the petitioner successfully obtains institution of a patent office trial (inter partes review, covered business method patent review, or … Continue reading

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SAP’s Cert Petition Denied by Supreme Court in Versata Patent Infringement Suit

In earlier posts, I described the $391 million patent infringement judgment awarded to Versata for SAP’s alleged infringement of US Pat. 6,553,350.  I also detailed SAP’s attempts to avoid the judgment by challenging the ‘350 patent in the first covered business … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, petitions practice, Post Grant Review, software patents, Uncategorized | Tagged , , , , , , , , , , , , , , , , | Leave a comment

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 Grants Motion for Early Termination of Proceeding Before CBM Trial Institution

The Patent Trial and Appeal Board recently decided to grant a motion to terminate a CBM proceeding prior to a decision of whether to institute trial in that CBM proceeding.  In CBM2013-00015, between Oracle Corporation (Petitioner) and Community United IP, … Continue reading

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