MICROSOFT CORPORATION v. PROXYCONN, INC. (Fed. Cir. 2015) (P) – Substitute claims submitted during IPR must be shown patentable over all the prior art of record

by Steve Driskill | Jun 16, 2015 | [sub] inter partes review, PTO Procedure

A patentee may be required to show that substitute claims submitted during IPR are patentable over the prior art of record, including prior art that was not part of the original bases of unpatentability for which review of the claims being substituted was instituted....

ARCELORMITTAL FRANCE v. AK STEEL CORPORATION (Fed. Cir. 2015) (P) – Reissue amendments may be deemed impermissibly broadening in view of prior litigation claim construction

by Steve Driskill | May 12, 2015 | [sub] reissue, PTO Procedure

Amendments during reissue may be deemed broadening and thereby render a patent unenforceable if they broaden a previous and controlling claim construction from prior litigation even if the PTO’s broadest reasonable interpretation may perceive them as narrowing. Here,...

EXELA PHARMA SCIENCES, LLC v. LEE (Fed. Cir. 2015) (P) – PTO revival rulings are not subject to third party collateral challenge

by Steve Driskill | Mar 26, 2015 | [sub] petitions, PTO Procedure

PTO revival rulings are not subject to third party collateral challenge. Here, for example, the decision to revive a PCT national stage entry application for “unintentional” delay was found to be unreviewable by a third party challenger. Background / Facts: The patent...

GILEAD SCIENCES, INC. v. LEE (Fed. Cir. 2015) (P) – A supplemental document filed after a reply constitutes an unreasonable delay for PTA adjustment

by Steve Driskill | Feb 26, 2015 | [sub] patent term adjustment, PTO Procedure

Filing a supplemental document after submitting a reply constitutes an unreasonable delay by the applicant for the purposes of PTA adjustment. Here, for example, the filing of a supplemental IDS after submitting a reply to an initial restriction requirement was found...

IN RE CUOZZO SPEED TECHNOLOGIES, LLC (Fed. Cir. 2015) (P) – PTO’s decision whether to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit

by Steve Driskill | Feb 4, 2015 | [sub] overlapping jurisdiction, PTO Procedure

The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision....

FLEMING v. ESCORT INC. (Fed. Cir. 2014) (P) – Marketplace developments prompting reassessment of issued claims qualifies as “error” sufficient for reissue

by Steve Driskill | Dec 24, 2014 | [sub] reissue, PTO Procedure

Although a “now-regretted choice” does not meet the “error” precondition for obtaining reissue under 35 U.S.C. § 251, marketplace developments that prompt a patentee to reassess their issued claims is a “classic reason that qualifies as error” for the purposes of...