Category Archives: District Court

AIA On-Sale Bar Applies to Publicized Sales, Even When Knowledge of Sale Did Not Disclose the Underlying Invention

By Reza Mollaaghababa The Court of Appeals for the Federal Circuit (CAFC) recently construed the on-sale bar provision of 35 U.S.C. 102(a) in a way that will make it easier for petitioners to challenge third party patents. While in an … Continue reading

Posted in America Invents Act, Court of Appeals Fed Circuit, District Court, Federal Circuit, On-Sale BAR, Post Grant Review, Trial Tactics | Tagged , , , , , ,

IPR Estoppel Provisions May Not Be That Scary After All

By Yue (Joy) Wang IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic.   Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Appeals, Court of Appeals Fed Circuit, District Court, Estoppel, Federal Circuit, Final PTAB Decision, Instittion Decision, Post Grant Review, Section 315(e) bar | Tagged , , , , , , , , , , , ,

Affirmative Defense of Invalidity As Part of a Motion to Intervene Does Not Bar Filing of a Subsequent IPR Petition

By Reza Mollaaghababa According to 35 U.S.C. §315(a), an inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil … Continue reading

Posted in America Invents Act, District Court, Estoppel, Instittion Decision, Inter Partes Review, Motion to Intervene, Section 315(a) bar, Trial Tactics | Tagged , , , , , , , , , ,

A Decision Not to Institute a Trial at the PTAB Does Not Carry Much Weight in Federal Court

By Tom Engellenner Two recent cases show that simply avoiding a post-grant review proceeding at the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB) not only does not preclude a defendant in underlying patent infringement litigation in a federal … Continue reading

Posted in Anticipation/Obvious, Claim Construction, District Court, Instittion Decision, Trial Tactics, Uncategorized | Tagged , , , ,

Does the Broadest Reasonable Interpretation Standard Make Sense?

By Tom Engellenner Two of the earliest challenges to patents under the new post grant proceedings established by the America Invents Act (AIA) are now on appeal to the Court of the Appeals for the Federal Circuit and both appeals … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Anticipation/Obvious, Appeals, Court of Appeals Fed Circuit, Covered Business Methods, District Court, Federal Circuit, Inter Partes Review, Post Grant Review, PTAB Procedure, Reexamination, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , , , , , ,