Tag Archives: patent claims

In re Cuozzo Speed Technologies: Federal Circuit Affirms Board Finding of Unpatentability in First IPR

The Federal Circuit affirmed the final determination of the Board in the first inter partes review under the Leahy-Smith America Invents Act (AIA).   Garmin petitioned for IPR of claims 10, 14 and 17 of U.S. Patent No. 6,778,074 owned by Cuozzo … Continue reading

Posted in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Federal Circuit, inter partes review, Mandamus Actions in the Federal Circuit, prior art, PTAB Patent Trials, reexamination generally | Tagged , , , , , , , , , , , , , , | Leave a comment

PTAB Joinder Practice Update: Board Interprets 35 U.S.C. § 315(c) to Require Party Joinder

Sep. 30, 2014 In at least two decisions last week, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude a joinder request by an existing party to the proceeding.  The … Continue reading

Posted in 315(b) One Year Bar, claim challenges, Future of PTAB Trial Practice, inter partes review, Litigation, prior art, PTAB, PTAB Patent Trials | Tagged , , , , , , , , , | 1 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

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

Posted in 315(b) One Year Bar, America Invents Act, inter partes review, Joinder of AIA Proceedings, PTAB, PTAB Patent Trials | 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

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

Divided Federal Circuit Panel Finds Computer System Claims Not Patent-Eligible

Posted:  September 8, 2013 On September 5, 2013, the Federal Circuit affirmed a District court holding that a computer system claim was not patent-eligible under 35 U.S.C. § 101.  In Accenture Global Servs., GmbH v. Guidewire Software, Inc., a divided panel … Continue reading

Posted in claim challenges, Claim Construction, Federal Circuit, patent-eligible subject matter, software patents, statutory subject matter | 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

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