Category Archive: File History

Dec 22

Unreasonable Claim Construction Causes PTAB Reversal

  In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB today in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining the challenged claims to be unpatentable because, as a matter of logic, the prior art could not anticipate or render those claims. The patent …

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Feb 24

Patent Owner’s IPR Statements May Constitute A “Disclaimer” of Claim Scope In Litigation

It is well-established that a patent owner’s statements about a claim term made during prosecution can be viewed as a disclaimer of claim scope during the Markman phase of litigation. Similarly, clear and unambiguous statements made in the patent specification can restrict claim scope during litigation. Several district courts have now followed suit with regard …

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Nov 19

PTAB Claim Construction Ruling Wipes out Half of Challenged Grounds, But Trial Still Initiated

In a case marked by a great number of grounds of unpatentability, Covidien was able to get 14 challenged claims of an Ethicon Endo-Surgery patent into a trial for inter partes review in a case styled as Covidien LP v. Ethicon Endo-Surgery, Inc. (IPR2013-00209), involving U.S. Pat. No. 8,317,070. The ‘070 patent relates to surgical …

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Nov 07

Operability of Combined References Considered by PTAB in Obviousness Analysis

In a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as Zodiac Pool Sys., Inc. v. Aqua Products, Inc. (IPR2013-00159), involving U.S. Pat. No. 8,273,183. …

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Feb 22

Seventh Inter Partes Review Trial Instituted

The last four PTAB Orders from February 12, 2013, that instituted inter partes review trials, were all related to the large battle underway between Xilinx and Intellectual Property Ventures Management.  We will take them in order, first looking to the Board’s decision to institute an IPR trial in Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00018) …

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