Posts Tagged: "reexamination"

Earlier this week i4i Limited Partnership announced that the United States Patent and Trademark Office confirmed the patentability of all claims of the U.S. Patent 5,787,449. The ‘449 patent was being reexamined by the USPTO at the request of Microsoft after the Redmond giant lost close to $300 million as a result of infringement of the i4i patent. Microsoft was also ordered to stop selling Word or remove certain XML functionality. MS had put a lot of hope in reexamination, and now their options are running out. They are apparently contemplating an appeal to the US Supreme Court.

Whatever your opinion of the business model, it is impossible to ignore the fact that Cheryl Milone has turned Article One Partners a major player in the patent research field. Article One is attracting big name members to the Board of Directors, they have started a patent quality review blog and Milone was recently invited to the White House to participate in a round-table event, which she talks about in our conversation. So, without further ado, here is my conversation with Cheryl Milone. We talk patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more.

In the opinion, the BPAI agreed with the reexamination Examiner that any one of four (out of five) prior art references that contained descriptions of oral administration of the herb Yin Yang Huo (also known, perhaps not too surprisingly, as horny goat weed) are anticipatory prior art for claim 24. There were other rejections (double patenting rejections) that the Examiner set forth and that BPAI upheld. The patent claims cover the first commercially (wildly) successful male impotence drug Viagra®.

Only one court (District of Minnesota) seemed to give much consideration to the argument that plaintiff would be unduly prejudiced by defendant’s continuing allegedly infringing activity during the stay. One court acknowledged that a party may be prejudiced by the delay of the stay if it can be shown that the ability to gather evidence would be compromised by the stay.

Yes, a message from the shameless commerce division no doubt, but there are a handful of excellent PLI patent related programs coming up in February and March that deserve a mention.  After all, how often can one attend a program, get CLE credits and meet Federal Circuit Judge Pauline Newman?  Not all that often to be sure, but Judge Newman…

Did you know that while a total of 4,849 ex parte and inter partes patent reexamination requests were filed from 1999 to 2009, only 55 are reexaminations of patents associated with FDA approved products and listed in the FDA’s Orange Book? This is just one of the most surprising and interesting facts that emerged from our first of its kind…

Just last week I wrote an article about district courts being increasingly reluctant to order a stay of a pending patent infringement litigation even when the United States Patent Office has granted reexamination. To quote the words of Lee Corso of ESPN College Football fame, “not so fast my friend!” Courtesy of the Docket Report daily patent litigation newsletter, I…

Back in 2007, a default judgment was entered in a Nevada district court against the well known Internet gambling website Bodog.com for infringement of U.S. Patent 5,564,001. (1st Technology LLV. v. Rational Entertainment LTDA., Rational Poker School Limited, Bodog Entertainment GroupS.A., Bodog.com, and Futurebet Systems Ltd.) As Internet gambling is illegal in the U.S. the folks at Bodog chose not…

Over the last several months large law firms have opened Reexamination Practice Groups and even starting blogs dedicated solely or in part to exploring the issues presented by Reexamination.  And as I am writing, PLI is presently hosting day 1 of a two day Reexamination and Reissue program at its San Francisco headquarters. The program titled Reissue and Reexamination Strategies…

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay…

I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway.  The conference has been a good one with some excellent presentations.  This morning there was a Bilski presentation, and since then we have…

The fact that the FTC is uncomfortable with patent trolls, or non-practicing entities as is now the accepted term, does not mean that the government should launch an investigation to help those tech-giants who can’t figure out how to combat trolling. First, we need to keep in mind that whatever rule is created to apply to the so-called non-practicing entities, will also apply to universities, federal laboratories and research & development companies. So we can use the politically correct term — non-practicing entities — or we can use the term “patent trolls.”

General Electric Company (NYSE:GE), and Ronald A. Katz Technology Licensing, L.P., announced on February 11, 2009, that the two settled the patent litigation between the parties. Also announced on February 11, 2009, was a settlement between BCD and Power Integrations. Although BCD maintains it did not infringe, and the claims asserted by Power Integrations are under final rejection in reexamination, the settlement was for business reasons so BDC could move forward.

I do still believe that reexaminations are the way to go if companies are really interested in stopping patent trolls, and perhaps moving forward there will be a merger between the prior art found by Article One and attempts to get the Patent Office to review previously granted patents. In any event, according to USPTO statistics, 9.2% of requests for ex parte reexamination result in all claims being canceled and 59% of the time certificates issue with at least some claims being changed. Even more dramatic, 74% of requests for inter partes reexamination result in all claims being canceled and 14% of the time certificates issue with at least some claims being changed. The answer to dealing with patent trolls is to go after them with reexaminations, not to try and build a useless defensive patent portfolio.

This means that for inter partes reexamination 74% of requests result in all claims being canceled and 14% of the time certificates issue with at least some claims being changed. This is staggering because if you can eliminate all claims then the patent is worthless, but even if you can only change claims you have effectively prevented retrospective infringement of changed claims because the claim that is changed can only be enforced moving forward from the point of change. Thus, quality reexamination representation is far better than paying a bounty for the collection of prior art references.