686 articles · page 33 of 58
Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses? The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA…
Federal Circuit Summary Before Prost , Schall, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The plain language of 35 U.S.C. § 311(a) unambiguously leaves no room for assignor estoppel to apply in the IPR context. Dr. David…
On November 7, 2018, the Fed. Cir. issued a summary affirmance of the PTAB’s interference decision of September 6, 2016, in Kumar v. Sung ( Patent Interference 14/322,039 ) which found that the claims of U.S. Pat. No. 8,541,422 were obvious over a…
New Proposal May Only Amplify Current Amendment Criticisms A few weeks back, the USPTO published a Request for Comments (RFC) ( here ) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which…
On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB). In particular, the USPTO is replacing the “broadest…
Pilot Program Would Provide for Separate Briefing and Board Feedback The USPTO has published a Request for Comments (RFC) ( here ) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the…
Leveraging PTAB 101 Determinations in Parallel Litigation Covered Business Method (CBM) challenges have fallen out of favor with petitioners. This is due to a number of factors, not the least of which is the narrowing of CBM jurisdiction after Unwired…
The quote is from “Treasure of the Sierra Madre” when a bandido leader is trying to convince Bogart that his gang are Federales, and Bogie asks to see their badges. In the context of Yeda Res. and Dev. v. Mylan, Appeal no. 2017-1594 et al.…
Invalidity Contentions Serve as Estoppel Benchmark A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or…
After much deliberation, the USPTO has published a Final Rule mandating that the claim construction standard articulated by the Fed. Cir. in Phillips v. AWH Corp., 415 f .3d 1301 (Fed. Cir. 2005), and used by federal district courts, will replace the…
Final Rule Publishes Tomorrow As predicted last week , the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here ). The change will…
Phillips Claim Construction Rule Imminent Back in May, the USPTO issued a Notice of Proposed Rulemaking to switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings ( here ). Thereafter the…
