Category: Uncategorized
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Patent Office Director Vidal Finds OpenSky’s IPR Conduct to be Abuse of Process
Director Vidal issued a careful decision concerning OpenSky’s copycat filings and subsequent conduct in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102. The conclusion provides a great summary of her findings: Viewed as a whole, OpenSky’s conduct has been an abuse of the IPR process, the patent system, and the Office.…
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What’s Important Now in Intellectual Property?
With all that is going on in world events and a pandemic that has raged on for over a year, it’s hard to focus on intellectual property as an important topic to discuss. But we must because innovation has carried on and patents, trademarks, copyrights, and trade secrets are still valuable assets that have to…
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Thanks to IAM for the Global Leaders 2020 Designation
In case you are interested in a recent interview IAM conducted about US patent law and post-grant activities, the link with my comments is here. Thanks to IAM for the Global Leaders 2020 award. To all my colleagues and clients, thank you as well as you are what it is all about. There has been so…
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PTO Brief Argues Why PTAB Can Issue Decisions On Remand From FedCir
Under the America Invents Act IPRs are supposed to be completed with a final written decision no later than a maximum of 18 mos after institution. But if the FedCir remands for further findings on appeal can the PTAB issue a decision on remand past the 18 mos? “Yes” says the USPTO, and in a…
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PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities
Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights. In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs based on sovereign immunity. (IPR2016-01274, -01275, -01276.) Other universities caught wind of the Covidien decision…
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PTAB Boardside Chat Provides Statistics About Multiple IPR Petition Filings
On October 24, 2017, PTAB Chief Judge David Ruschke and Lead Judge William Saindon conducted a webinar covering filing statistics for IPR petition filings, and in particular how multiple petitions have fared statistically in the PTAB. They also announced three informative decisions relating to the 35 USC § 325(d) issue: IPR2016-01571 – Unified Patents, Inc. v. Berman IPR2017-00739…
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10 Minute Webinar on IPR Claim Amendments In View of Aqua Products
If you are interested in knowing more about amendments in IPR proceedings and the practical impact of the Federal Circuit’s en banc Aqua Products decision, click here to view a brief 10 minute presentation.
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Shire’s Granted Motion to Amend Offers Additional Insight Into PTAB Amendment Practice
When a patent undergoes review at the Patent Trial and Appeal Board (“PTAB”), the Patent Owner has an opportunity to file a motion to amend claims so that a substitute claim can be proposed for each claim sought to be amended. Stakeholders, and even some jurists, have been critical of the PTAB for denying the majority…
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Best Practices and Strategies for Patent Procurement and Enforcement Webinar Series
Looking for a holistic view of best practices and strategies for patent procurement and enforcement? You are invited to attend a free, two-part webinar on best patent practices. Click this link to register. I will be co-presenting with Christopher Larus of Robins Kaplan to offer best practices for patent generation and patent enforcement. Each webinar is…
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PTAB Narrows Its Preliminary Claim Interpretation To Uphold Cellular Patent
In July, 2014 Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) petitioned for inter partes review of claims 1, 2, 8-12 and 18-22 of U.S. Patent No. 7,787,431 owned by Intellectual Ventures II LLC (“IV”). In February, 2015, the Board instituted trial on claims 1 and 2 based on obviousness grounds, but denied institution of obviousness…