The threshold bar for being able to successfully petition the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) to initiate the covered business method review used to be low. See Versata. However, in Secure Axcess, LLC v. PNC Bank (Fed. Cir. 2/21/17), the Federal Circuit raised the threshold standard so that only claims that have a … [Read more...]
Post grant proceedings
Post grant proceedings are various administrative proceedings to remediate or invalidate a patent.
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The applicability of Covered Business Method Review was significantly reigned back by the Federal Circuit in Unwired Planet, LLC. v. Google Inc. (Fed. Cir. 2016). Covered Business Method Review is a type of post grant proceeding at the USPTO wherein a third party, usually a defendant or an accused patent infringer, challenges the validity of a patent in order to avoid patent … [Read more...]
I. Background of Covered Business Method review Under U.S. patent laws, the United States Patent and Trademark Office (USPTO) can review the validity of patents that are financial in nature under a Covered Business Method (“CBM”) review. CBM review is great for potential defendants who might want to invalidate a patent that they may be infringing. The USPTO is also helping … [Read more...]
Bottom line: For parties accused of patent infringement an IPR (inter partes review) for the reasons below is an attractive alternative to full blown litigation for attacking the validity of a patent. Amendments to the claims are limited to one with any further amendments being only by petition. The patent owner must show why the amended claims are patentable over … [Read more...]
Bottom line: A covered business method (CBM) proceeding is a post patent grant proceeding at the United States Patent and Trademark Office. Anyone to challenge the validity of certain patents based on any invalidity ground, with minor ramifications if they also end up in full blown litigation in district court. Under Versata v. Sap (Fed. Cir. 2015), CBM proceedings are not … [Read more...]
Bottom line: Defendants should strongly consider an Inter Partes Review (IPR), a proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) when accused of patent infringement because it may be easier to invalidate the patent at the PTAB instead of at the Federal district court. In re Cuozzo Speed Technologies, LLC (Fed. … [Read more...]
Patent owner can't sue alleged infringer again on reexamined claims The following case illustrates a tension between the claim preclusion doctrine which bars relitigation of claims decided in earlier litigation between the parties (i.e., res judicata) and the reexamination procedure at the United States Patent and Trademark Office. Claim preclusion provides that the parties … [Read more...]
In Institut Pasteur v. Focarino (Fed. Cir. Dec. 30, 2013), the Federal Circuit dealt with three different patents all related to one parent patent application in three different ways. One of the patents did not survive but the other two did. For patent owners, a good patent strategy is to have a multiplicity of patents in the event that not all of the patents or claims of the … [Read more...]