Tag: reexamination
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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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Do You Want That Post-Grant Review Super-Sized? – Part III
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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), UncategorizedThis 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 PGR must complete in 1 to 1 ½ years. Part II addressed some of the…
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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 parte prosecution. In ex parte prosecution, if a patent application includes 200 claims that are…
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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 post-grant procedures, the two new procedures only come in two statutory sizes: regular and super-sized.…
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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 application. There is a reasonable argument to use this “assembly line” approach for very large…
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America Invents Act: Post-Grant Procedures for Patent Challengers
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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, UncategorizedNow 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. 6 – see slides*); Inter Partes Review (Sec. 6 – see slides*); Business Method Transitional Proceedings…