Tag: petition
-
Patent Challenger Seeks PTAB Jurisdiction over “Involved” Pending Applications
The AIA provides new post-issuance proceedings to challenge issued patents. But can these challenges be used to stop related pending patent prosecution dead in its tracks? One recent inter partes review petition requests just that and time will tell whether the PTAB takes control of the related applications. Chi Mei Innolux Corp. (CMI) filed a…
-
Parallel Litigation and PTAB Review Create Complex Interplay of Patentability and Validity
—
by
in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, clear and convincing evidence, covered business methods, indefiniteness, Litigation, motion practice, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, statutory subject matterA company called CoreLogic Solutions, LLC owns U.S. Patent No. 5,361,201, relating to a process for appraising real estate property. The ‘201 patent was filed on Oct. 19, 1992 and issued on Nov. 1, 1994. Absent some kind of patent term extension, the ‘201 patent will expire soon. The ‘201 patent is the subject of both a litigation and a covered…
-
Comparative Study of Post Issuance Review Options
—
by
in America Invents Act, Broadest Reasonable Interpretation standard, Claim Construction, clear and convincing evidence, covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, indefiniteness, inter partes reexamination, inter partes review, Litigation, motion practice, Patent Reform, patent-eligible subject matter, petitions practice, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, statutory subject matter, supplemental examinationToday I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company. A PDF of our joint presentation is found here. The presentation provides a comparison between IPR (inter partes review), PGR (post grant review), and CBM (covered business…
-
More IPR Filings on Day 2
—
by
in America Invents Act, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, covered business methods, Ex Parte Prosecution, indefiniteness, inter partes review, Litigation, Patent Reform, patent-eligible subject matter, Phillips-type construction, Post Grant Review, PTAB, statutory subject matterIf you are monitoring adoption of post-issuance filings you may have noticed that five more IPR filings were filed on the second day of operation of the PTAB trials portal pursuant to the new IPR and CBM patent review options from the America Invents Act. The list of today’s filings is reproduced below: 4 IPRs…
-
PTO, PTAB and AIA History in the Making Today, September 16, 2012
Today the PTO received its first petitions for inter partes review (IPR) and covered business method patent review (CBM) pursuant to the America Invents Act (AIA). We are in a kind of second phase of implementation of the AIA that phases out inter partes reexamination and that makes IPR and CBM post-issuance reviews available for…
-
Do You Want That Post-Grant Review Super-Sized? – Part III
—
by
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…
-
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…
-
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.…
-
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…
-
America Invents Act: Post-Grant Procedures for Patent Challengers
—
by
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…