Tag: ex parte prosecution
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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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USPTO to Host AIA Second Anniversary Forum on Sept. 16
The USPTO will host an AIA Second Anniversary Forum on September 16, 2013, at the USPTO’s Alexandria campus in the Madison Auditorium from 1 to 5 pm, and also via webcast. Here is the USPTO announcement: At the Forum, USPTO subject matter experts from the Patents Business Unit and administrative patent judges from the Patent…
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Patent Office Guidance for Examiners in wake of CLS Bank Decision: No Change for Now
On May 13, 2013, the Patent Office issued a memo to USPTO examiners after the CLS Bank et al. v. Alice Corp. Federal Circuit en banc decision of last week. The memo instructs examiners to maintain existing examination procedure for evaluating subject matter patentability. Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, advised examiners: ”…
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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…
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Therasense on Remand: Inequitable Conduct Deja Vu?
In 2011, the Court of Appeals for the Federal Circuit en banc reheard the thorny issues of inequitable conduct and announced new intent and materiality standards. Therasense, Inc v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). The majority held that a weak showing of intent can no longer be offset by a strong showing of…
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Do You Want That Post-Grant Review Super-Sized? – Part III
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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…
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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…
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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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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…