patent disputes

Question 1

in rem jurisdiction

Answer 1

power a court may exercise over property or status

Question 2

in personam jurisdiction

Answer 2

power a court may exercise over a person

Question 3

what is inter partes review

Answer 3

procedure for challenging the validity of a patent registered with the US Patent Office

Question 4

how can a defendant short circuit a district court or ITC proceeding filed against them?

Answer 4

if you prove that the patent is invalid via a inter partes review filed with PTAB.
this action can also stay a district court case.
less expensive than district court proceedings.

Question 5

when seeking monetary damages from patent infringement what forum should be used? what does this forum also prevent?

Answer 5

district court can also seek a court order to prevent further infringement

Question 6

appellate jurisdiction

Answer 6

power of a higher court to review and potentially overturn the decisions of a lower court.

Question 7

which fora has appellate jurisdiction?

Answer 7

Court of Appeals for the Federal Circuit

Question 8

what is a section 337 investigation?

Answer 8

a legal action when a patent owner seeks to restrain the import of products that infringe a patent

Question 9

what are some benefits of legal action before ITC?

Answer 9

expedited period to obtain a decision (~1 year)
the lower cost in obtaining the decision
ability to secure in rem jurisdiction

Question 10

patent prosecution

Answer 10

process of obtaining a patent

Question 11

patent litigation

Answer 11

process of enforcing the rights of a patent

Question 12

requirements for practicing patent prosecution

Answer 12

persons licensed before the USPTO Patent Bar

Question 13

requirements for practicing patent litigation

Answer 13

persons licensed before a state bar and/or at least one federal district court

Question 14

USPTO

Question 15

ITC

Question 16

prior art

Answer 16

inventions publicly known before the new invention was filed in the application

Question 17

under what circumstances is an invention patent granted

Answer 17

when the ‘claims’ of the patent application are determined to be legally distinguishable from the prior art.

Question 18

what happens if a patent is denied?

Answer 18

Patent Attorney will have the opportunity to present arguments to the Patent Examiner in order to traverse, or overcome, the denial.

Question 19

patent litigation always involves _ and may involve _

Answer 19

always involves determining whether or not a product or service violates the claims of an issued patent. setting out the exact scope, or ‘metes and bounds’, of the claims in the patent.
may involve filing a legal complaint, motions practice, discovery practice, and presenting arguments before a judge or jury

Question 20

possible results of patent litigation

Answer 20

invalidation of the patent
a judgment of infringement
or a judgment of noninfringement

Question 21

what follows a judgement of infringement?

Answer 21

monetary damages and/or injunction against infringing activity

Question 22

office action from patent examiner

Answer 22

document written by a patent examiner in response to a patent application after the examiner has examined the application

Question 23

what is included in an office action from patent examiner

Answer 23

citations of prior art
reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims.

Question 24

what should a patent summary contain?

Answer 24

overview of the invention set forth in the patent
the technological area covered by the invention
areas of concern clear from the patent
personal observations with regard to the patent