Tag: Bianchi
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Therasense on Remand: Inequitable Conduct Deja Vu?
In 2011, the Court of Appeals for the Federal Circuit en banc reheard the thorny issues of inequitable conduct and announced new intent and materiality standards. Therasense, Inc v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). The majority held that a weak showing of intent can no longer be offset by a strong showing of…
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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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IPO Article on Misjoinder
My last post was on the America Invents Act amendments to 35 U.S.C. 299 affecting joinder in patent infringement actions. If you are interested in that topic, you should see an article reported in today’s IPO Daily News. The article was written by Scott Burt from Jones Day, Barry F. Irwin from Kirkland & Ellis…
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America Invents Act Impacts Joinder in Patent Infringement Cases
The America Invents Act brought a lot of changes for patent attorneys. This post will discuss the impact of Section 19 of the Act on joinder of parties in litigation. The amendments to 35 U.S.C. § 299 provide that joinder of defendants shall not be permitted “solely on allegations that they have infringed a patent…
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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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Marine Polymer Technologies v. HemCon, Inc. and Intervening Rights
Marine Polymer Technologies, Inc. v. HemCon, Inc. (Fed. Cir. 2011) is a widely reported case that raises some questions about the scope of the application of intervening rights. It involves a matter where the literal language of a claim was not amended, yet absolute intervening rights were still found to apply to the accused infringer. Marine…
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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…