Tag Archives: petition

Patent Challenger Seeks PTAB Jurisdiction over “Involved” Pending Applications

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 … Continue reading

Posted in America Invents Act, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, PTAB | Tagged , , , , , , , , , , , , , , , | Leave a comment

Parallel Litigation and PTAB Review Create Complex Interplay of Patentability and Validity

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 … Continue reading

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 | Tagged , , , , , , , , , , , , , , , , , , , | Leave a comment

Comparative Study of Post Issuance Review Options

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 … Continue reading

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 | Tagged , , , , , , , , , , , , , , , , , , , | 1 Comment

More IPR Filings on Day 2

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 … Continue reading

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 | Tagged , , , , , , , , , , , , , , , , | Leave a comment

PTO, PTAB and AIA History in the Making Today, September 16, 2012

Today the PTO received its first petitions for inter partes review (IPR) and covered business method patent review (CBM) pursuant to the America Invents Act (AIA).  We are in a kind of second phase of implementation of the AIA that … Continue reading

Posted in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review, PTAB, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , , | 1 Comment

Do You Want That Post-Grant Review Super-Sized? – Part III

This is the third post in a series of articles on PGR strategies.  In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes.  By statute, the … Continue reading

Posted in America Invents Act, covered business methods, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, ex parte reexamination, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, raised or reasonably could have raised, reexamination generally, Substantial New Question (SNQ), Uncategorized | Tagged , , , , , , , , , , , , , , , , , , , , , , , | Leave a comment

Do You Want That Post-Grant Review Super-Sized? – Part II

This is the second post in a series of articles on PGR strategies.  In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t.  PGRs are very different from ex … Continue reading

Posted in America Invents Act, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, motion practice, Patent Reform, Post Grant Review, PTAB, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , | Leave a comment

Do You Want That Post-Grant Review Super-Sized? – Part I

Patents come in all shapes and sizes.  There are long ones, short ones, ones that are hard to read, and easy ones.  Some have 1 claim and some have 200 claims.  Some have valid claims, and some not-so-much.  But when it comes to … Continue reading

Posted in America Invents Act, motion practice, Patent Reform, petitions practice, Post Grant Review, PTAB, supplemental examination, Uncategorized | Tagged , , , , , , , , , , , , , , , , | Leave a comment

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular … Continue reading

Posted in America Invents Act, Damages, estoppel, Ex Parte Prosecution, ex parte reexamination, future damages, inter partes reexamination, inter partes review, Litigation, past damages, Patent Reform, Post Grant Review, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , , , , , , , , , , | Leave a comment

America Invents Act: Post-Grant Procedures for Patent Challengers

Now that the America Invents Act has become law there are several new provisions for patent challengers to consider.  For example, the Act includes: preissuance submissions by third party challengers (Sec. 8 — see the last post); Post-Grant Review (Sec. … Continue reading

Posted in America Invents Act, Appealable, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Uncategorized | Tagged , , , , , , , , , , , , , , , , , | Leave a comment