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Posts Tagged ‘ reexamination ’

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, 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: Authors, Congress, IP News, 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, 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, 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: Authors, IP News, 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, 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, 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.

Kodak Facing Patent Defeat to Apple & RIM, Patent Reaffirmed by PTO in Reexam Falters at International Trade Commission

Posted: Tuesday, Jan 25, 2011 @ 6:46 pm | Written by Gene Quinn | 10 comments
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Posted in: Apple, Companies We Follow, Gene Quinn, International Trade Commission, IP News, Articles, Patents, Reissue & Reexamination, USPTO

On January 14, 2010, Eastman Kodak Company (NYSE:EK) brought an action at the International Trade Commission (ITC) challenging the importation of certain RIM Blackberry phones and Apple iPhones.   Kodak alleged that the importation of the phones violated Section 337 of the Tariff Act of 1930.  The predicate for the the alleged Section 337 violation was the infringement of claims 15, 23, 24, 25, 26 and 27 of United States Patent No. 6,292,218. Yesterday, January 24, 2011, Kodak announced that it has received notice that the Administrative Law Judge (ALJ) in the ITC action brought by Kodak against Apple Inc. and Research In Motion Limited had issued an initial determination recommending that the patent claims at issue are invalid and not infringed.

PLI’s Winter 2011 Schedule Full of Great IP Programs

Posted: Thursday, Jan 20, 2011 @ 7:07 pm | Written by Gene Quinn | 1 Comment »
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Posted in: Attorneys, Gene Quinn, IP News, Articles, Practising Law Institute, Programs & Events

From the shameless commerce division, with at least a mild dose of self promotion, I am here to tell you about some of the intellectual property programs that the Practising Law Institute (PLI) has in store for the Winter 2011 season.

By now practically everyone probably knows that PLI is a sponsor, and that I teach the PLI Patent Bar Review Course, so I suppose you can take what I say with a grain of salt, but I am really looking forward to these PLI programs in particular.  I will be signed up to attend via webcast the programs I cannot make live, and I will be in in Chicago, IL in March for the Patent Bar Review Course and in New York City for the 5th Annual Patent Law Institute from February 17-18, 2011.  If your firm is a privileged member you can attend these and all other PLI programs for free, with the exception of the Patent Bar Review Course.

Patent Office Orders Reexamination of Tax Related Patent

Posted: Thursday, Jan 20, 2011 @ 7:15 am | Written by Gene Quinn | 16 comments
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Posted in: Gene Quinn, IP News, Articles, Patents, Reissue & Reexamination, USPTO

Scott Daniels, partner in the firm Westerman, Hattori, Daniels & Adrian, and the primary author of Reexamination Alert™, recently happened across a rather rare reexamination story.  See PTO Director Initiates Reexamination Against Gift Tax Patent.  Earlier  this month, on January 12, 2010, the United States Patent and Trademark Office ordered a Director Initiated Reexamination pursuant to 37 CFR 1.520.  See also MPEP 2239.   The patent in question, U.S. Patent No. 6,567,790, relates to a patent on a method of minimizing tax liability.

Microsoft Petitions PTO to Reverse Refusal to Grant Reexam in i4i Dispute, Could Moot Supreme Court Appeal

Posted: Thursday, Jan 6, 2011 @ 11:12 am | Written by Scott M. Daniels | 19 comments
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Posted in: Authors, Companies We Follow, IP News, Articles, Microsoft, Patents, Reissue & Reexamination, Scott Daniels

The main front of the on-going war between Microsoft and i4i regarding the latter’s U.S. Patent No. 5,787,449 is certainly the Supreme Court. There, Microsoft has asked the Court to reverse a $290 million verdict against it for infringement of the ‘449 patent, arguing that the burden on an accused infringer of proving that a patent is invalid over the prior art should be “preponderance of the evidence” rather than the traditional standard applied by the trial court of “clear and convincing” evidence, at least where the reference asserted was not before the examiner in the original patent prosecution. The Court’s grant of certiorari in this case has understandably generated enormous concern in the patent community, fearful of the potential for undermining the strength of hundreds of thousands of commercially significant patents.

At the same time that Microsoft pursued its appeal of the verdict for i4i, both at the Supreme Court and earlier at the Court of Appeals for the Federal Circuit, Microsoft requested that the Patent Office undertake a new reexamination of the ‘449 patent on the basis of previously considered prior art, but art presented “in a new light” according to Microsoft. This request was dismissed by commentators as a side-show, a mere attempt to support its argument before the Supreme Court, or even a “Hail Mary” (actually, I said that). Indeed, that estimation seemed to be correct when the patent examiner refused to grant Microsoft’s request to grant reexamination – a sharp rejection in view of the very high percentage of reexamination requests that are granted.

Smucker Loses Reexam Battles, But May Win Litigation War

Posted: Monday, Jan 3, 2011 @ 10:57 am | Written by Scott M. Daniels | 48 comments
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Posted in: Authors, IP News, Articles, Patent Trial and Appeal Board, Patents, Reissue & Reexamination, Scott Daniels, USPTO

On Thursday the PTO Board of Appeals affirmed (here, here) the reexamination examiner’s findings that two patents – U.S. Patent Nos. 7,314,328 and 7,325,994 – are valid over certain prior art. The ‘328 and ‘994 patents are owned by Mack-Ray and claim nozzle structures for “a spreader apparatus,” e.g., a squeeze bottle for holding jelly and spreading it on bread. Mack-Ray sued Smucker (the jelly company) for infringing the two patents, and both companies subsequently requested the present reexaminations. What will interest reexamination practitioners, however, is the extreme reluctance of the Board to consider issues not strictly within the PTO’s reexamination jurisdiction.