Tag: IPR
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Are Patent-Friendly PTAB Decisions On the Rise?
Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take charge” approach to instituting review and canceling patent claims was met with approval by businesses under attack by…
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PTAB Dismisses Three IPR Petitions Based on Sovereign Immunity
Covidien LP had a license to U.S. Patent 7,062,251, owned by the University of Florida Research Foundation (UFRF, Patent Owner). UFRF alleged breach of contract by Covidien, and sued Covidien in Florida state court for breach of license. Covidien counterclaimed for a declaratory judgment that it does not infringe the ’251 patent, and removed the…
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Patent Due Diligence and Evaluation After the AIA
Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not be deemed invalid in view of prior art. Before the America Invents Act (AIA), patents…
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4 Tips to Make Your Patent Portfolio AIA-Ready
The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings before the Patent Trial and Appeal Board (PTAB). These proceedings, called IPRs (inter partes reviews), PGRs…
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New PTAB Trial Practice Rules Effective May 2, 2016
On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. A small correction to these Amendments was published on April 27. I presented a summary of these rule changes at the AIPLA Spring Meeting in Minneapolis, MN on May 18, 2016. The…
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Federal Circuit Employs Phillips Claim Construction to Measure Claims Amended in Reexamination for Possible Intervening Rights
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in Broadest Reasonable Interpretation, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, Damages, Ex Parte Prosecution, Federal Circuit, inter partes review, intervening rights, Litigation, past damages, Phillips claim construction, Post Grant Review, preponderance of evidence, prior art, reexamination generallyWhen patent owners sue an accused infringer for patent infringement, one way for the accused infringer to avoid liability is to show noninfringement of the patent claims. But if the claims are extremely broad, the accused infringer may find it difficult to prove noninfringement and instead may have to rely on a showing of invalidity to avoid…
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IPRs And Settlement of Patent Infringement Cases
The passage of the AIA is still relatively recent, yet statistics are starting to emerge that demonstrate the effective use of IPRs to settle patent infringement cases. IAM magazine recently published an interesting report by Unified Patents showing that IPRs have the effect of increasing the median time to settle litigations (from 211 to 420 days), but when viewed…
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Federal Circuit Reinforces PTAB’s Authority to Institute Trial on Selected Claims in Synopsis v. Mentor Graphics Appeal
Newcomers to post-grant proceedings are often surprised by the PTAB’s claim-by-claim approach to patent challenges under the America Invents Act. When reporting statistics about IPRs, commentators tend to ignore these considerations: First, an IPR petition can be drafted to challenge all or some of the claims of a patent. So the set of challenged claims can be less…
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Patent Trends to Watch in 2016
2016 is starting off with a bang! A number of interesting new developments have occurred as we enter into this new year: The Supreme Court will review broadest reasonable interpretation (BRI), courtesy of the petition for cert in Cuozzo The Federal Circuit continues to selectively review and provide guidance on PTAB decisions, such as in Ethicon Endo-Surgery…
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Board Guidance on its View of Petitioner Estoppel: Westlake Services v. Credit Acceptance Corp:
July 21, 2015 Last week, the Board provided an opinion to offer guidance on its view of the scope of petitioner estoppel. The Westlake Services v. Credit Acceptance Corp. decision relates to the scope of estoppel to a Petitioner following a final written decision from a first petition. Westlake Services v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14,…