inter partes review Archives - Page 3 of 8

Unified Patents’ Institution Decision Gives Insight to PTAB’s Real Party in Interest Analysis

Feb 16, 2015

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in 315(b) One Year Bar, America Invents Act, Correction of Petition After Bar, estoppel, inter partes review, PTAB

Those watching decisions from the Patent Trial and Appeal Board (PTAB or Board) have observed a trend where a patent owner challenges an IPR petition based on alleged defects in the petition’s identification of real parties in interest (RPI) to the petitioner. As seen in earlier posts, improper identification of RPIs can result in denial of the…

Target Wins Rehearing of IPR Joinder Decision with Expanded Panel

Feb 13, 2015

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Tim Bianchi

in America Invents Act, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Joinder Post AIA, Mandamus Actions in the Federal Circuit, PTAB, PTAB Patent Trials

Last fall, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to require joinder requests by a non-party to an ongoing proceeding. (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.) Prior to that decision, the Board had interpreted § 315(c) to allow for issue joinder by the petitioner of the original proceeding (see, for…

In re Cuozzo Speed Technologies: Federal Circuit Affirms Board Finding of Unpatentability in First IPR

Feb 5, 2015

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Tim Bianchi

in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Federal Circuit, inter partes review, Mandamus Actions in the Federal Circuit, prior art, PTAB Patent Trials, reexamination generally

The Federal Circuit affirmed the final determination of the Board in the first inter partes review under the Leahy-Smith America Invents Act (AIA). Garmin petitioned for IPR of claims 10, 14 and 17 of U.S. Patent No. 6,778,074 owned by Cuozzo Speed Technologies. The Board found these claims obvious and denied Cuozzo’s motion to amend the…

The Settlement Effect of PTAB Proceedings and Recent Patent Office Trial Statistics

Dec 29, 2014

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Tim Bianchi

in America Invents Act, Future of PTAB Trial Practice, inter partes review, Litigation, petitions practice, Post Grant Review, PTAB, PTAB Patent Trials, Settlements in Post-Grant Proceedings, Termination of Post-Grant Proceedings

December 29, 2014 The Patent Trial and Appeal Board (PTAB) released statistics for AIA Patent Office trials as of Dec. 18, 2014. Different commentators have recently reported that the institution rate for these proceedings has dropped to about 60-70 percent, depending on how you calculate it. Those familiar with PTAB trial practice (IPR, CBM, PGR and…

Patent Board Denies First Data Corp. IPR Petitions Based on Real Party In Interest and One-Year Bar

Oct 21, 2014

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Tim Bianchi

in 315(b) One Year Bar, Correction of Petition After Bar, Indemnification, inter partes review, Litigation, PTAB Patent Trials

October 21, 2014 In 2013, Cardsoft, LLC (Patent Owner) sued First Data Corp. (Petitioner) and First Data Merchant Services Corp. for patent infringement in the Eastern District of Texas, serving its complaint on May 2, 2013. (Cardsoft (Assignment for the Benefit of Creditors) LLC v. First Data Corp., Civil Action No. 2:13-cv-290 (E.D. Tex.).) The complaint…

Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel

Oct 17, 2014

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Tim Bianchi

in America Invents Act, Future of PTAB Trial Practice, inter partes review, IPR Joinder, Joinder of AIA Proceedings, Joinder of Parties Post-petition, Litigation, Patent Reform, PTAB, PTAB Patent Trials

October 17, 2014 Last month, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude joinder requests by an existing party to an ongoing proceeding. (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.) In these recent decisions, the Board decided that § 315(c) requires “party joinder” and…

PTAB Applies “Issue Joinder” Analysis to Deny Microsoft’s IPR Joinder Requests

Oct 2, 2014

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Tim Bianchi

in 315(b) One Year Bar, America Invents Act, Future of PTAB Trial Practice, inter partes review, IPR Joinder, Joinder of AIA Proceedings, PTAB, PTAB Patent Trials

October 1, 2014 The reader may recall that last week an expanded PTAB panel announced an interpretation of 35 U.S.C. § 315(c) that essentially ruled out a joinder request for a subsequent IPR petition made by an existing party to the instituted proceeding. Target Corp. v. Destination Maternity Corp. (IPR2014-00508 and -00509.) In Target, the Board…

PTAB Joinder Practice Update: Board Interprets 35 U.S.C. § 315(c) to Require Party Joinder

Sep 30, 2014

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Tim Bianchi

in 315(b) One Year Bar, claim challenges, Future of PTAB Trial Practice, inter partes review, Litigation, prior art, PTAB, PTAB Patent Trials

Sep. 30, 2014 In at least two decisions last week, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude a joinder request by an existing party to the proceeding. The Board had allowed this practice in the past, for example, when a party timely filed…

Lex Machina’s 2013 Patent Litigation Report Shows Disparity Between Litigated Patents and those under PTAB Review

May 14, 2014

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Tim Bianchi

in America Invents Act, covered business methods, Future of PTAB Trial Practice, inter partes review, Joinder Post AIA, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials

Litigation and post-grant proceedings often go hand-in-hand. A new litigation report published by Lex Machina summarizes patent litigation data for 2013 and prior years. It is an interesting report and very easy to digest. Two findings caught my eye. The first one relates to the overall number of patent litigation cases filed in 2013: Plaintiffs filed 6,092…

See You at the AIPLA 2014 Spring Meeting!

Apr 30, 2014

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Tim Bianchi

in America Invents Act, covered business methods, inter partes review, Patent Reform, Post Grant Review

I am presenting at the AIPLA Spring Meeting on May 15, 2014 in Philadelphia and hope to see you there. My task is to provide strategies for filing inter partes reviews, covered business method reviews and post-grant reviews. I hope to see you there! I just got back from the PLI Post-Grant Conference held in…

ReexamLink By Tim Bianchi

Tag: inter partes review

Unified Patents’ Institution Decision Gives Insight to PTAB’s Real Party in Interest Analysis

Target Wins Rehearing of IPR Joinder Decision with Expanded Panel

In re Cuozzo Speed Technologies: Federal Circuit Affirms Board Finding of Unpatentability in First IPR

The Settlement Effect of PTAB Proceedings and Recent Patent Office Trial Statistics

Patent Board Denies First Data Corp. IPR Petitions Based on Real Party In Interest and One-Year Bar

Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel

PTAB Applies “Issue Joinder” Analysis to Deny Microsoft’s IPR Joinder Requests

PTAB Joinder Practice Update: Board Interprets 35 U.S.C. § 315(c) to Require Party Joinder

Lex Machina’s 2013 Patent Litigation Report Shows Disparity Between Litigated Patents and those under PTAB Review

See You at the AIPLA 2014 Spring Meeting!

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