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IP Strategies for Software Tech Companies

In This Presentation: - Key IP Concerns for Software Tech Companies - New Post-Grant Proceedings for Challenging Patents - Impact of Alice on Software Patents and the Importance of Building a Strong Patent...more

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

Second Petition Seeking Post Grant Review is Filed

Finally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review Petition. Accord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010. ...more

Post-grant review, continued: Inter partes, covered business methods

In my last post, I detailed some of the most common frustrations with patent litigation and how the U.S. Patent and Trademark Office offers alternative ways to challenge issued patents. I provided descriptions of two of the...more

An Inexpensive Alternative to Patent Litigation

The America Invents Act (AIA), passed in September 2011, provides additional procedures to challenge the validity of patents in the U.S. Patent and Trademark Office (USPTO). These “post grant” procedures are far less...more

Federal Circuit Review (August 2014)

Post Grant Review of Patent Favors Stay of Litigation - In VIRTUALAGILITY INC. v. SALESFORCE.COM, INC., Appeal No. 14-1232, the Federal Circuit reversed the district court's denial of a motion to stay pending a post...more

PTO post-grant review: Patent issuance is not end of the line

So, you find yourself a defendant in a patent infringement suit. Some patent holder has filed a lawsuit claiming that your company is infringing on their patented technology. The patent holder threatens to shut your business...more

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

First Petition for Post Grant Review Filed

At long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008. The popular “Rainbow Loom” is the commercial...more

Estoppel effects of post-grant patent proceedings under the AIA

By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous...more

First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of...more

Board Issues First Precedential Opinion

An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding. ...more

Case Alert -- Federal Circuit Reverses District Court Denying Stay Pending Covered Business Method Review

On July 10, 2014, the Federal Circuit issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., in which it reversed the district court’s order denying Salesforce’s motion to stay the district court suit pending...more

Challenging Prior Art Status In Post-Grant Proceedings

An inter partes review (“IPR”) proceeding allows a party to challenge the validity of a patent before the Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”). In an IPR proceeding,...more

The Duty Of Candor: Letting The Truth Shine

“Three things cannot hide for long: the Moon, the Sun, and the Truth.” The Patent Trial and Appeal Board (“PTAB”) relies on the truth coming to light to resolve disputes in post-grant proceedings in a “just, speedy, and...more

Federal Circuit Orders Stay Pending Completion of CBM Review

Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more

Docs @ BIO -- Federal District Court vs. the PTAB

Yesterday, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before...more

BIO International Convention 2014 Preview -- Part III: Post-Grant Patent Challenges and Biosimilar Regulatory Pathways

The 2014 BIO International Convention has already begun in San Diego, but most of the sessions and forums get underway beginning on Tuesday, June 24, 2014. Patent Docs has been highlighting a few sessions or other...more

What Australian companies need to know about ‘patent oppositions’ in the US

Many Australian companies will be familiar with the pre-grant patent oppositions that are available under Australian law. Similarly, many Australian companies will be familiar with post-grant patent oppositions before the...more

PTAB Denies Late Attempt to Alter the Applicable Claim Construction Standard in an IPR

A recent decision from the Patent Trial and Appeal Board (the “Board”) highlights the different claim construction standards that are ordinarily applicable in post-grant review proceedings and in district court, and...more

Federal Circuit Finds Consumer Watchdog Lacks Standing to Appeal Reexamination Decision Upholding WARF Stem Cell Patent

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Federal Circuit held that an inter partes reexamination requester must establish an injury in fact sufficient to confer Article III standing in order to appeal...more

Post-Grant Report - May 2014: Playing Offense As A Defendant: Using Covered Business Method Review To Turn The Tables In Patent...

New patent infringement lawsuits fill the dockets every morning. The asserted patents are often directed to a process involving financial services or products, electronic commerce, or monetary matters. The patents may...more

Post-Grant Report - May 2014: The Scope Of Discovery In Inter Partes Review Proceedings

A significant difference in the new inter partes review (IPR) proceedings versus the previous inter partes and ex parte reexamination proceedings is the availability of discovery to both petitioners and patent owners in IPR...more

A Primer On Claim Amendments in Post-Grant Review

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd. - In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under...more

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