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Patent challenges

Validity contests and patent enforcement mechanics.

IP-04 · 01

Challenging a Patent: Inter Partes Review and PTAB Practice

8 MIN · IP

Inter partes review is a narrow, fast, expensive way to kill patent claims — and it closes doors permanently. This brief maps the timing gates, the grounds limit, and the estoppel that follows a final written decision.

An inter partes review petition may generally be filed once nine months have passed since the patent issued or was reissued.
Grounds are limited to anticipation and obviousness, and only on prior art consisting of patents and printed publications.
Service of an infringement complaint starts a one-year clock; after it runs, 35 U.S.C. 315(b) bars the petition entirely.

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IP-05 · 02

Cease-and-Desist Letters: Strategy, Risk, and Declaratory Judgment

8 MIN · IP

A demand letter is not a warning shot. It can create federal jurisdiction for the recipient, start damages clocks, and trigger preservation duties on both sides at once.

A letter that creates a substantial, immediate controversy can give the recipient standing to sue first, in a forum of its choosing.
Wording controls that risk: identifying a patent, a product, and a demand moves a letter toward jurisdiction; an open licensing enquiry moves away.
Sending or receiving a demand triggers preservation duties, so routine deletion has to stop before anyone drafts a reply.

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IP-10 · 03

Patent Marking, Virtual Marking, and the Damages Consequence

9 MIN · IP

Marking is a housekeeping task with a seven-figure consequence. Without it, a patentee's damages often start at the demand letter or the complaint rather than at first infringement.

Where a patented product is sold, marking is a precondition to recovering damages for infringement occurring before actual notice was given.
Virtual marking is permitted: the word patent plus a web address that associates the article with the relevant patent numbers.
Claims to a method alone carry no marking duty, because there is no article to mark; mixed patents follow what is asserted and sold.

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