Like a lizard shedding its tail to avoid capture, patent owners continue to escape Covered Business Method (CBM) proceedings by disclaiming claims clearly directed to financial products or services. Despite growing tension...more
To fix clerical or typographical errors, patent owners typically file a request for a certificate of correction with the U.S. Patent and Trademark Office (USPTO). However, during an inter partes review (IPR) proceeding, the...more
To invalidate a patent as obvious, a prior art reference often must be modified to incorporate the teachings of another prior art reference. However, the Supreme Court has held that the obviousness analysis must include some...more
35 U.S.C. § 315(b) bars petitions for an inter partes review that are filed “more than one year after the date on which the petitioner, real party in interest or privy of the petitioner is served with a complaint alleging...more
The Patent Trial and Appeal Board (PTAB) has been notoriously shutting down attempts to amend claims during inter partes review proceedings, leading one Federal Circuit judge to remark that the option to amend “thus far...more
Properly prepared patent assignments and IP assignment clauses in employment agreements can play a critical role in an IPR proceeding — for example, by preventing your own patent applications from becoming invalidating prior...more