Category: claim challenges
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Patent Office Guidance for Examiners in wake of CLS Bank Decision: No Change for Now
On May 13, 2013, the Patent Office issued a memo to USPTO examiners after the CLS Bank et al. v. Alice Corp. Federal Circuit en banc decision of last week. The memo instructs examiners to maintain existing examination procedure for evaluating subject matter patentability. Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, advised examiners: ”…
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SAP Files Ex Parte Reexamination Request using Prior Art from Ongoing Litigations
As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act. To advance its PTAB trial date, SAP agreed to limit its argument to 35 U.S.C. 101 challenges set forth…
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Early PTAB Orders Demonstrate Differences Between AIA Patent Trials and District Court Trials
Patent practitioners are still absorbing some of the differences and advantages that are unique to litigation in the PTAB as opposed to district court litigation. For example, PTAB proceedings only decide questions of validity and are not directed to rule on questions of infringement or damages, as is the practice in traditional litigation. Another example…
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PTAB Publishes Trial Transcript from First Covered Business Method Patent Review
On April 17, 2013 the PTAB heard oral arguments in the first covered business method patent review between SAP and Versata. SAP challenged the validity of Versata’s U.S. Patent No. 6,553,350 in the PTAB under 35 U.S.C. § 101. My earlier posts detailed the events. The PTAB trial transcript has recently been published and the trial…
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Progressive Casualty Litigation Stayed Pending Outcome of Liberty Mutual CBMs
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in America Invents Act, claim challenges, covered business methods, estoppel, estoppel from administrative proceeding, factors for stay, indefiniteness, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, statutory subject matter, stay, UncategorizedProgressive Casualty Insurance Co. sued different insurance companies for patent infringement of 5 of its patents in 2010-2012 in the Northern District of Ohio. (Cases 1:10CV01370 and 1:11CV00082 against Safeco; Case 1:12CV01068 against State Farm; and Case 1:12CV01070 against Hartford.) One of the defendants is Safeco Insurance Company, which has Liberty Mutual as its parent.…
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SAP v. Versata: First Covered Business Method PTAB Trial Tests New AIA Trial Provisions
The first ever covered business method patent review stems from a patent litigation between Versata and SAP over two Versata patents relating to pricing products in mulitlevel product and organizational groups. The district court action began in 2007 when Versata sued SAP for alleged infringement of its U.S. Patent Nos. 6,553,350 and 5,878,400 (Versata Software,…
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Parallel Litigation and PTAB Review Create Complex Interplay of Patentability and Validity
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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 matterA 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 patent will expire soon. The ‘201 patent is the subject of both a litigation and a covered…
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Liberty Mutual Covered Business Method Patent Review Petition Tailored to Address Prior Art “Mischaracterized” During Reexamination
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in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, correcting reexamination using post-issuance review, covered business methods, inequitable conduct, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, reexamination generallyLiberty Mutual Insurance filed two more covered business method (CBM) patent review petitions dated September 29. The petitions both relate to U.S. Pat. No. 7,124,088 owned by Progressive Casualty Insurance, that relates to an on-line insurance policy service system as recited in claim 1 of the reexamined patent: 1. An on-line insurance policy service system…
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More Inter Partes Patent Reviews Filed on the PTAB PRPS
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in America Invents Act, claim challenges, Claim Construction, covered business methods, Damages, estoppel, future damages, inter partes review, intervening rights, Litigation, motion practice, Patent Reform, Post Grant Review, preponderance of evidence, PRPS Patent Review Processing System, PTAB, raised or reasonably could have raisedAs of 01:00 on September 27, the number of petitions for covered business method (CBM) patent reviews remained at 6, but five more petitions for inter partes reviews (IPRs) were filed, making a total of 17 IPRs. The total number of pending potential trials is now at 23 (actual trials have not be instituted yet, as these…
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Comparative Study of Post Issuance Review Options
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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 examinationToday 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 a comparison between IPR (inter partes review), PGR (post grant review), and CBM (covered business…