Tag: patent claims
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A Split Panel of the Federal Circuit Reverses PTAB Finding of Unpatentability Without Remand in DSS v. Apple
In DSS Technology Management v. Apple Inc., a split panel of the Federal Circuit reversed a finding of patentability by the Patent Trial and Appeal Board (PTAB or the Board), but did so without remanding the case back to the Board for further findings. In DSS, the Federal Circuit considered two inter partes review decisions finding…
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Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic
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A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings. In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of the same claims of the same patent. U.S. Patent No. 6,781,231 (“the ’231 patent”) entitled “Microelectromechanical System…
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Federal Circuit’s Aqua Products Decision Clarifies Burden on IPR Petitioner to Challenge Amended Claims
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in Adjudicative instead of examinatorial, Broadest Reasonable Interpretation standard, claim challenges, estoppel from administrative proceeding, Federal Circuit Review of PTAB Proceedings, Motion to Amend, preponderance of evidence, reexamination generally, Settlements in Post-Grant Proceedings, Termination of Post-Grant ProceedingsOn October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”). Aqua Prods. v. Matal, 2017 U.S. App. LEXIS 19293. The case concerns U.S. Patent No. 8,273,183, relating to…
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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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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…
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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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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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Are Your Patent Procurement Guidelines Outdated?
I saw a bumper sticker that said: “Change is inevitable, but growth is optional.” This is true in many facets of life, and it is true for patent practice. The changes of the past few years are numerous and far-reaching. Is your patent portfolio strategy growing with these changes? One Simple Exercise If you are…