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Posts Tagged ‘ reexamination ’

CAFC: Intervening Rights for Claims Unamended During Reexam*

Posted: Tuesday, Sep 27, 2011 @ 9:01 pm | Written by Eric Guttag | Comments Off
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Posted in: Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patents, Reissue & Reexamination, USPTO

CAFC Rules “Intervening Rights” May Be Based on Arguments Even Though Claims Unamended During Reexamination.

I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in conflict with the express language of 35 U.S.C. § 307(b), as Judge Lourie’s dissent vigorously (and more importantly, correctly) points out.



America Invents: How the New Law Impacts Your Patent Practice

Posted: Monday, Sep 12, 2011 @ 7:51 pm | Written by Gene Quinn | 11 comments
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Posted in: America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, Practising Law Institute, Reissue & Reexamination

The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it promises to change virtually all of patent practice as we know it over the next 18 months. Some pieces of the legislation will go into effect almost immediately, but other aspects of the legislation will become effective 12 months and 18 months after the bill becomes law. We are in for the largest set of changes anyone practicing has ever faced. The 1952 Patent Act codified what was in existence, the American Invents Act shakes the very foundation of patent law and patent practice.

The Practising Law Institute will host a one-day program titled America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice. This event will be on Monday, September 26, 2011, and will take place live at PLI’s San Francisco Center in downtown San Francisco, California. The program will be webcast live over the Internet for all those who are unable to make it to the live location.



What’s Wrong with Reexamination and How to Make it Better

Posted: Tuesday, Jul 26, 2011 @ 10:54 am | Written by Gene Quinn | 11 comments
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Posted in: Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, Reissue & Reexamination, USPTO

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.



US Patent Office Proposes Adopting Therasense Standard

Posted: Thursday, Jul 21, 2011 @ 10:32 am | Written by Gene Quinn | 17 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

Earlier today the United States Patent and Trademark Office published a Federal Register Notice proposing amendments to Rule 56 and Rule 555, and requesting public comment.  Titled Revision of the Materiality to Patentability Standard for the Duty to Disclose Information in Patent Applications, the Notice pertains to the recent Federal Circuit decision in Therasense v. Becton and the USPTO intention to adopt the standard for materiality required to establish inequitable conduct as defined in Therasense. 

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings.  It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office.  Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant.  The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.



Torpedoing Patent Rights

Posted: Sunday, Jul 10, 2011 @ 1:32 pm | Written by Judge Paul Michel | 16 comments
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Posted in: Congress, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Reform, Patents, Reissue & Reexamination, USPTO

The vast number of America’s companies that need patents to prosper and grow should fear the post-grant provisions for challenging patents in H.R. 1249, the patent reform bill passed last month by the House of Representatives. In a system already plagued by delays in granting patents, they threaten to delay courts from enforcing patents once finally granted. This threat has received little attention, perhaps because advocates of the bill promise promptness that they cannot deliver.

Advocates’ promise of completion in one year rings hollow for several reasons. First, the one-year deadline does not count the year, on average, that the inevitable appeal will take. Second, the deadline is extendable to 18 months and, in any event, not enforceable. Third, the one year does not count the petition stage before the proceeding begins. That adds at least another 5 months—two months for the patent owner’s response plus three months, again unenforceable, for the patent office to decide whether the challenger’s petition warrants initiating such a proceeding. So, total elapsed time usually will be not one, but almost three years.



Wanted: Prior Art to Invalidate Lodsys Patents

Posted: Friday, Jul 8, 2011 @ 4:41 pm | Written by Gene Quinn | 15 comments
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Posted in: Apple, Companies We Follow, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Trolls, Patents, Reissue & Reexamination

Article One Partners is at it again, this time with four patents in the cross-hairs owned by the company suing Apple App Developers for patent infringement — Lodsys.  Article One Partners has made a name for itself as the premiere crowd sourcing, prior art locating company in the world. Now they have three different studies (see below) aimed squarely at the four Lodsys patents.  In addition to being used against Apple App Developers, these four patents were also used earlier this week to sue the New York Times and others, and earlier still against Best Buy, Adidas, CVS and others. Indeed, it seems that Lodsys is becoming quite a nuisance for defendants, which places them at or near the top of the patent troll most wanted.



Inter Partes Reexam: Under Utilized Patent Litigation Defense

Posted: Wednesday, Jul 6, 2011 @ 3:07 pm | Written by Gene Quinn | 9 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patents, Reissue & Reexamination, USPTO

Earlier today Scott Daniels of Westerman Hattori Daniels & Adrian wrote on his Reexamination Alert™ blog about his review of 100 requests for inter partes reexamination filed between December 2010 and the end of March 2011.  See The PTO’s Recent Treatment of Reexamination Requests.  Daniels’ review of these cases demonstrates that there was a slight drop in the percentage of reexaminations order compared with historical numbers.  Out of this sampling 90% of the requests were granted, compared to a historical grant rate of 95%.

A 5% drop in the percentage of inter partes reexamination requests isn’t in and of itself interesting. What is extremely interesting, however, is what Daniels concluded was the cause of the denials.



Stay Ordered: Paul Allen Patent Litigation Takes Abrupt Detour

Posted: Friday, Jun 24, 2011 @ 1:33 pm | Written by Scott M. Daniels | 3 comments
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patents, Reissue & Reexamination, Scott Daniels

Paul Allen

Paul Allen’s road to monetize his huge patent portfolio took an abrupt detour when Judge Marsha Peckham of the Western District of Washington stayed Allen’s eleven infringement cases, pending completion of reexamination proceedings for the patents-in-suit.

Allen, a co-founder or Microsoft, established Interval Research Corporation and then set about acquiring an enormous number of patents, assigning them to Interval Research.  For years, his patents sat quietly as idle assets.  The subject of constant speculation in the high-tech community, Allen’s patents remained untested.  But on August 27, 2010, Allen, through corporate subsidiary Interval Licensing, sued a who’s-who of computer and Internet companies in the District Court in Seattle, notably AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube.  Apart from a minor hic-up in December, when Judge Peckham ordered Interval Licensing to state the basis for its infringement allegations with greater specificity, see Complaint Dismissed, the case proceeded smoothly.



USPTO to Revise Reexam Practice, Is Patent Reform Dead?

Posted: Tuesday, Apr 26, 2011 @ 8:08 pm | Written by Gene Quinn | 9 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, Reissue & Reexamination, USPTO

USPTO Headquarters, Alexandria, Virginia

The United States Patent and Trademark Office (USPTO) is seeking public comment on a proposal to streamline the procedures governing ex parte and inter partes patent reexamination proceedings. The timing of this announcement, which appeared in the Federal Register on April 25, 2011, seems curious to me. With patent reform circulating in the House of Representatives does this signal a belief that on the part of the Patent Office that patent reform is dead?  The patent reform passed by the Senate and that being considered by the House has revised post-grant review proceedings, so wouldn’t it be wise to wait to revamp reexamination until after patent reform passes, that is if it seems likely to pass?



The Problem with Software Patents? Uninformed Critics!

Posted: Tuesday, Apr 5, 2011 @ 3:50 pm | Written by Gene Quinn | 42 comments
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Posted in: Anti-patent Nonsense, Computers, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Reissue & Reexamination, Software

The problem with software patents isn’t that they are granted on obvious innovations, but rather that those who spend so much time complaining about them are just about completely clueless, at least with respect to patent law. It borders on the comical to observe some of the apoplectic rants against software patents, which almost universally conclusively prove that the person writing (or ranting) has not read past the title of the software patent in question. That is, of course, assuming they have even looked at the patent and are not merely mimicking what they have read from some other equally clueless and irresponsible critic.