Strategic Use of Terminal Disclaimer

In Amkor Technology, Inc. v. Tessera, Inc., IPR201-00242, Paper 117, (April 14, 2014), the patent owner filed a terminal disclaimer of the remainder of the patent term (which was going to expire later in the year), to force the Board to apply the construed meaning of the claims, instead of the broadest reasonable interpretation (arguing that expiration of the patent prevented use of the BRI).  The patent owner believed that when the contrued meaning is applied, the inter partes review should be terminated.  The Board authorized the parties to brief the issues.

 

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.