Back on September 25, 2005, Judge
Farnan of the United States District Court for the District of Delaware stayed
the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc.
( Civil Action 03-185 ) relating to U.S. Patent 6,523,680 . The stay was
entered in favor of inter partes reexamination...
Silence in Original Prosecution History Used Against
As discussed previously, prosecution
history is applied inconsistently in patent reexamination claim interpretation
analysis . In applying a plain meaning analysis to claim language,
prosecution history is considered as a necessary...
Estoppel of 35 USC § 317(b) Applies Only to Inter Partes Patent
One of the risks often associated
with ex parte patent reexamination is that an outcome favorable to a patent
holder is considered to "gold plate" a patent that is later asserted against
Can an Ongoing Patent Reexamination be Stopped?
With most patent reexaminations
now being conducted concurrent to a district court or ITC proceeding, a common
question of such plaintiffs is "what becomes of the patent reexamination once
the litigation settles?"
In the case of ex parte...
Inter Partes Patent Reexamination is Not Always the Best Choice
In the case of Inventio AG v. Otis Elevator Co. (SDNY) [ enhanced version available to lexis.com subscribers ] , the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination...
By Matthew Osborne Judge Hilton, in a textbook case of Prosecution History Estoppel ,
granted a fitness equipment manufacturer summary judgment of
non-infringement without breaking a sweat. The 24 page opinion in Fitness Gaming Corp. v. Icon Health & Fitness, Inc. , Case
No. 1:11CV200, 2011...
Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel
new estoppel provisions of Inter Partes Review (IPR) and Post Grant
Review (PGR) differ from the previous estoppel provisions of inter partes
patent reexamination in that they not only prevent a subsequent request...
Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel
The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions...
Speedy, One Sided Estoppel to Force Judicial Deference
The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for I n ter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination...
Revised Rule on Anonymous Requests Subject to Practitioner Interpretation
The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent , and USPTO...
The Leahy-Smith America Invents Act (AIA) expands the scope of information that third parties may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or before the U.S. Patent and Trademark Office (USPTO). The AIA also provides for the application...
Unsuccessful CBM Challengers Forced Back into Court?
As discussed last week [Oct. 8th - 12th], the Transitional Program for Covered Business Method Patents, or "CBM" proceeding offers significant advantages to qualifying patent challengers . While technically a Post Grant Review (PGR) proceeding...
New Decision Explores 315(e)(1) Estoppel
Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst ., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative...
PTAB Announces New Informative Decisions
The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC , IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants...