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Tag Archives: Estoppel

Claim Construction Not Illuminated By Ambiguous Restriction Requirement

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Claim Construction; Federal Circuit Decisions
In Plantronics, Inc. v. Alph, Inc., the Federal Circuit rejected arguments that the election made in response to the Restriction Requirement limited the scope of the claims in a manner that was not reflected in the claim language, specification, or prosecution history. Although the patent holder prevailed on this issue, this case serves as a … Continue reading this entry
Tags: Aliph, Claim Construction, Estoppel, Plantronics, Prosecution History Estoppel

Fresenius Escapes $25 Million Damages Award, Based on Invalidation of Baxter Patent In Ex Parte Reexamination

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Federal Circuit Decisions; Patent Trials
In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. This decision validates the use of ex parte … Continue reading this entry
Tags: Baxter, Concurrent Litigation, Estoppel, Ex Parte Reexamination, Fresenius, Reexamination, Res Judicate

Federal Circuit Holds The Reexamination Door Open In In Re Baxter

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Federal Circuit Decisions
When the Federal Circuit denied the Request for Panel Rehearing and Rehearing en banc in In re Baxter, the court let stand its two decisions that affirmed conflicting rulings on the validity of the same patent. In Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009), the court affirmed the district … Continue reading this entry
Tags: Baxter, Estoppel, Ex Parte Reexamination, Fresenius, Reexamination, Res Judicata

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Posted By Foley & Lardner LLP on Posted in Patent Reform; Reexam; USPTO Proposed Rule Changes
Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents … Continue reading this entry
Tags: America Invents Act (AIA), Estoppel, Ex Parte Reexamination, Leahy-Smith America Invents Act

Adopting To First-to-File: The Significance Of Segregating Subject Matter

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Patent Reform
One important strategy for adopting to the first-to-file system of the America Invents Act will be to segregate subject matter that has an effective filing date of March 15, 2013 or earlier from subject matter that has an effective filing date of March 16, 2013 or later. This is because even after March 16, 2013, it … Continue reading this entry
Tags: America Invents Act, Estoppel, First To File, First To Invent, Inter Partes Review, Leahy-Smith America Invents Act, Post-Grant Review

Three Proposed USPTO Board Rules That Should Not Be Adopted

Posted By Foley & Lardner LLP on Posted in Patent Reform; USPTO Proposed Rule Changes
Please welcome Andrew Baluch as a new contributing author for PharmaPatentsBlog! There is a lot to like about the USPTO’s proposed rules for the new patent trial proceedings that the Patent Trial and Appeal Board (PTAB) will conduct under the America Invents Act (AIA). On the whole, the proposed rules released last month appear to … Continue reading this entry
Tags: Amendment, America Invents Act, Board, Board of Patent Appeals and Interferences, discovery, Estoppel, Inter Partes Review, Leahy-Smith America Invents Act, Patent Trial And Appeal Board, Post-Grant Review

Proposed AIA Implementation Rules: Estoppel Against Ex Parte Reexamination

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes
On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent.  While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that … Continue reading this entry
Tags: America Invents Act, Estoppel, Ex Parte Reexamination, Inter Partes Review, Leahy-Smith America Invents Act, Post-Grant Review, Third Party Requester

Federal Circuit Explains Unforseeability Under Festo

Courtenay C. Brinckerhoff Posted By Courtenay C. Brinckerhoff on Posted in Doctrine of Equivalents; Federal Circuit Decisions
In Duramed Pharmaceuticals, Inc. v. Paddock Laboratories, Inc., the Federal Circuit rejected Duramed’s arguments that prosecution history estoppel did not bar application of the doctrine of equivalents under Festo because the equivalent at issue was not foreseeable. In so doing, the Court illuminated the rather narrow applicability of the “unforeseeable” route to rebutting a presumption … Continue reading this entry
Tags: Amendment, Cenestin, Conjugated Estrogens, Doctrine of Equivalents, Duramed, Estoppel, Festo, Foreseeability, Infringement, Paddock, Prosecution History Estoppel, Unforeseeability