Tag: issued patent
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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…
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America Invents Act: Post-Grant Procedures for Patent Challengers
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in America Invents Act, Appealable, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, UncategorizedNow that the America Invents Act has become law there are several new provisions for patent challengers to consider. For example, the Act includes: preissuance submissions by third party challengers (Sec. 8 — see the last post); Post-Grant Review (Sec. 6 – see slides*); Inter Partes Review (Sec. 6 – see slides*); Business Method Transitional Proceedings…
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Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes
Pre-Issuance Challenge Option Added Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122. Written submission of the relevance of a patent application, patent, published patent application, or other printed publication must be made before the Notice of Allowance or the later of (1) six months after…
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Strategic Use of Reexamination in view of the Patent Reform Bill
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in covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, inter partes review, Litigation, motion practice, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Reissue, stay, Substantial New Question (SNQ), supplemental examinationLast week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit. The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.” The powerpoint presentation materials can be found here. The materials assume that the bill currently pending before the Senate is passed substantially intact. The…
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Estoppel in Post-Grant Review (cont’d)
In the previous post we discussed some aspects of post-grant review (PGR) in the current bill before the Senate. The grounds available for petition in PGR are more comprehensive than those available for traditional reexamination and and also for the grounds of petition slated for inter partes review. So if the estoppel is on grounds that…
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Stay of Litigation Pending Inter Partes Reexamination Warranted Despite Possible Lengthy Reexam Pendency
District courts are making increasingly detailed and sophisticated decisions on motions to stay litigation pending reexamination. One example is the analysis performed in N Spine Inc. and Synthes USA Sales, LLC v. Globus Medical Inc., (1-1–cv-00300 (DED)). N Spine and Synthes USA Sales (Plaintiffs) sued Defendant Globus for alleged infringement of U.S. Patent No. 7,326,210 (the ‘210 patent) on…
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Reexamination Practice: One Size Does Not Fit All
I attended a reexamination roundtable at the Patent Office last week where ideas for reexamination reform were proposed. The Patent Office listened and took notes. I thought it was a very productive meeting overall. As the various speakers presented their comments to the questions posed by the Office, it reminded me how everyone views reexamination differently: Patent Owners who…
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Patent Owner Stay Motion Successful Based on Defendants’ Reexam Requests Filed on Eve of Markman
In Fifth Market, Inc. v. CME Group Inc, et al., (1-08-cv-00520, D. Del), the Patent Owner/Plaintiff (Fifth Market, Inc.) sued multiple Defendants on two patents (U.S. Pat. No. 6,418,419 and U.S. Pat. No. 7,024,387) in 2008. Three amended complaints were subsequently filed, the last one on January 10, 2011. The Defendants answered on February 7,…
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Fractus SA Gets $23M Verdict Against Samsung in Antenna Patent Litigation
In Fractus, S.A. v. Samsung Electronics Co., Ltd., et al. (6:09-CV-203, EDTX), a jury gave a verdict of patent infringement of four different patents owned by Fractus S.A. against Samsung to the tune of $23,129,321 in damages. The jury found that Fractus proved the infringement was willful by clear and convincing evidence. The Verdict Form provides details as to…