It was then often difficult to decide whether a product infringed a patent, since the sole basis to know the extent of protection was the description, in view of the prior art. However, even among patent legal systems in which the claims are used as the reference to decide the scope of protection conferred by a patent, the way the claims are used may vary substantially.Traditionally, two types of claiming system exist: No patent system today is a purely either central or peripheral, but the system used in Germany and most of the other countries of continental Europe is considered more central than the system currently used in the United Kingdom, the United States, and especially Japan, which are more peripheral.[Id.]Only a handful of cases have been decided on the merits, but the decisions overwhelming favor the patent challenger. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 (Jan. According to one study, from 2007-2012, patent holders succeeded in about 63 percent of cases tried to a district court judge, and succeeded in about 77 percent of cases tried to a jury.As of February 1, 2014, the Patent Trial and Appeal Board (Board) has canceled all claims at issue in its two final written decisions on the merits in IPR proceedings. [Pricewaterhouse Coopers, "2013 Patent Litigation Study: Big cases make headlines, while patent cases proliferate," at 9.]A raft of IPR and CBM decisions is expected from the Board in the coming months, so one should revisit the success rates as more data becomes available.In order to exclude someone from using a patented invention, the patent owner, or patentee, needs to demonstrate in a court proceeding that what the other person is using falls within the scope of a claim of the patent; therefore, it is more valuable to obtain claims that include the minimal set of limitations that differentiate an invention over what came before (i.e., the so-called prior art).
To request a reexamination, one must submit a “request for reexamination,” pay a substantial fee, and provide an explanation of the new reasons why the patent is invalid based on prior art.
, the Board noted that two challenged claims failed to comply with 112 ¶ 4 (requiring dependent claims “contain a reference to a claim previously set forth”). further limit the subject matter of the claim from which they depend.” IPR2013-00172, No.
Instead the Board stated in a footnote that they would “address only those grounds of unpatentability asserted under §§ 102 and 103.” IPR2013-00252, No.
In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable.
To have a patent reexamined, an interested party must submit prior art that raises a "substantial new question of patentability". One of the new mechanisms is a post-grant review proceeding, which will provide patent challengers expanded bases on which to attack patents.