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An Update on Inter Partes Review Proceedings Best Practices
February 16, 2017 12:00pm
Intellectual Property Blog
The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f)) in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua […]
Posted: January 20, 2017, 5:25 am
One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element. This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]
Posted: January 19, 2017, 5:18 am
The filer of a petition to revive an expired patent met the intent prong of the test for inequitable conduct by acting with at best willful ignorance; the filer certified that a failure to pay a maintenance fee was unintentional when he not only had not investigated, but had no knowledge, as to why the […]
Posted: January 17, 2017, 7:57 pm
A district court recently reaffirmed its ruling that statutory estoppel does not apply to grounds of invalidity that could have been included in a petition for an inter partes review but weren’t, clearing the way for the defendant to raise those grounds of invalidity against the patent at trial. Intellectual Ventures I LLC et al. […]
Posted: January 16, 2017, 3:18 pm
Patent claims directed to providing portable storage devices with access to terminals have survived a motion for summary judgment that made a patent-eligibility challenge under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank. IOENGINE LLC v. Interactive Media Corp., No. 14-1571-GMS (D. Del. Jan. 4, 2017). Claims of U.S. Patent No. 8,539,047 are […]
Posted: January 15, 2017, 5:40 am