Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation. Materials Prepared by John B. Pegram Fish & Richardson P.C. _____ AIPLA IP Practice in Europe Committee March, 2014. 18 Month PTAB Timeline. 1. Preparation. Petitioner
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Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation
Materials Prepared by
John B. Pegram
Fish & Richardson P.C.
AIPLA IP Practice in Europe Committee
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., slip op. CBM2012-00003 (PTAB Oct. 25, 2012) (requiring substantial reduction from 422 grounds of rejection based on 10 references for 20 claims).
(a) specifically identifying features added to substitute claim vs. challenged claim; and
(b) presenting “technical facts and reasoning about those feature(s), including construction of new claim terms” sufficient to demonstrate patentability.
Idle Free Systems, Inc. v. Bergstrom, Inc., slip op. IPR2012-00027 (PTAB June 11, 2013)
--“with specific evidence and reasoning, including
to rebut the patent owner’s position on patentability of the proposed substitute claims
37 C.F.R. § 42.51(b)(1)(iii)
5-part test for establishing “in the interest of justice”
(1) More than a possibility and mere allegation that something useful will be found,
(2) Not merely seeking early identification of the other party’s litigation positions,
(3) Lack of ability to generate equivalent information by other means,
(4) Easily understandable requests, and
(5) Requests are not overly burdensome to answer.
See Garmin International Inc. v. Cuozzo Speed Technologies LLC, slip. op. IPR2012-00001 (PTAB Mar. 5, 2013)
John B. Pegram
Fish& Richardson P.C. [email protected]