Tag: reissue
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PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities
Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights. In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs based on sovereign immunity. (IPR2016-01274, -01275, -01276.) Other universities caught wind of the Covidien decision…
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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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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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Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I
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in America Invents Act, Broadest Reasonable Interpretation standard, clear and convincing evidence, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, reexamination generally, Reissue, UncategorizedToday, USPTO Director David Kappos posted a comment advocating the use of the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act. This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different…
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En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening Rights
In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc. On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ‘245 patent based on actions taken in a reexamination proceeding. That opinion was vacated and…
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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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The Patent Office Wants Your Ideas for Streamlining Reexamination
On Monday, April 25, 2011, the Federal Register announced a public meeting to solicit opinions on a number of changes being considered at the U.S. Patent Office to streamline both ex parte reexamination and inter partes reexamination proceedings. Written comments can also be submitted to the Patent Office by June 29, 2011. Some of the…
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Petition Granted for Rehearing en banc of Akamai Technologies v. Limelight Networks
On April 20, 2011, the Federal Circuit granted the petition by Akamai Technologies for rehearing en banc its appeal in Akamai Technologies, Inc. v. Limelight Networks, Inc. The order vacated the earlier opinion of December 20, 2010. The order includes a request to file new briefs addressing this question: If separate entities each perform separate…
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Federal Circuit Decision in In re Tanaka
You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post. On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion. The Federal Circuit held that a patent owner that retains original patent claims and adds new narrower claims in…
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In re Tanaka
Suppose you issued a patent with several claims, including dependent claims. Now, suppose you wished you had claimed and issued a certain dependent claim, but did not have it in the originally issued patent. That new dependent claim is narrower than your independent claim that issued, so this is not a case of a broadening reissue. Now…