Patent Law Practice Center

Become a patent litigator in one easy step

There has never been a busier time to be a patent litigator, and if you have been thinking about what it takes to get started in this exciting practice area, look no further than PLI’s Fundamentals of Patent Litigation 2016, scheduled on April 19 in New York City and May 12 in San Francisco and via Live Webcast. This comprehensive program is perfect for those who want to add patent litigation to their litigation or patent prosecution practices.

Fundamentals of Patent Litigation 2016 will address key topics including:

• Elements of a patent case and what to expect plaintiff-side and defendant-side
• Overview of patent prosecution and changes to post-grant review
• Claim construction and the all-important Markman hearing
• Valuable practice tips – what can make or break a patent infringement case
• Critical venue and forum issues, how the ITC fits in, and the timeline of a case

On the Record with Rudy Telscher

On the Record with Rudy Telscher

Rudy Telscher, a partner with Harness Dickey, represented Octane Fitness in one of the most important patent cases decided by the United States Supreme Court over the last decade. The Supreme Court’s decision in Octane Fitness v. Icon Health & Fitness granted district court judges broad discretion to award attorneys’ fees as they see fit in patent litigation. This decision, and a decision in a companion case (i.e.,  Highmark, Inc. v. Allcare Health Management System, Inc.) derailed patent reform during the 113th Congress. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Whitehouse.gov: Help Us Shape Our Strategy for Intellectual Property Enforcement – This post from The White House Blog was written by Victoria Espinel, U.S. Intellectual Property Enforcement Coordinator. The purpose is to announce the Executive Office of the President’s newest initiative to develop a “new strategy of intellectual property enforcement”. Public comments on how to efficiently combat intellectual property infringement are being requested for this Strategy. For more info, click here.

2) Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon? – This post from Oblon Spivak’s Scott McKeown discusses how the reduction in incoming requests and how these new options for contested proceedings will free up much of the Central Reexamination Unit’s examiner’s time. As such, this post suggests ex parte patent reexamination filings could potentially benefit from the newly available bandwidth.

3) Patently-O: Supreme Court Grants Cert in Already v. Nike – This post reports on Already, LLC dba Yums v. Nike, Inc., No. 11-982, and how the Supreme Court’s grant of certiorari in this trademark law matter could impact patent litigation.

4) Patent Docs: USPTO Takes Next Step Towards Cooperative Patent Classification System – This post shares the USPTO’s announcement in the Federal Register that on July 10, 2012, it will be hosting a Cooperative Patent Classification (CPC) External User Day event (77 Fed. Reg. 37879). During the event, the USPTO will provide an overview of the CPC, a new patent classification system being jointly developed by the USPTO and the European Patent Office (EPO).

5) IP Watchdog: Practice Before the Patent Trial and Appeal Board – This post discusses the impact of the September 16th implementation of the new post grant review procedures on law firms and the USPTO alike. The post explains the new Patent Trial and Appeal Board and its duties, the hiring of new Administrative Patent Judges “at an astounding rate”, and what the new proposed trial rules will mean to patent lawyers.

DirecTV Reexamination Request of Satellite Broadcast Patent One of the Requests Filed the Week of June 18, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last Monday, DIRECTV asked for reexamination of a patent owned by Global Communications and claiming a satellite broadcast receiving and distribution system (see inter partes Request No. (1)). Global has sued a number of companies – presumably DIRECTV partners – for infringing that patent, as well as seven others.

Reexamination was requested for U.S. Patent No. 6,770,748 owned by Santaris Pharma and claiming nucleotide analogues that suitable as antisense molecules for treatment of cancer and AIDS patients (see inter partes Request No. (2)).  The Patent Office records do not yet show the identity of the requester, but it might be Isis since Santaris and Isis have fought over rights to this technology in the past.

Yet another request for reexamination was filed against a MobileMedia Ideas patent, perhaps by Apple or HTC – the Patent Office records do not say (see ex parte Request No. (6)).

Finally, DuPont and Monsanto are tussling over a soybean oil patent (see inter partes Request No. (7)).

The following inter partes requests were filed:

(1) 95/002,022 (electronically filed) – U.S. Patent No. 6,397,038 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications.  Filed June 18, 2012, by DIRECTV.  The ‘038 patent is currently the subject of a litigation styled Global Communications v. PDI Communications et al.(Case No. 4:11-cv-451 (N.D. Fla.).

(2) 95/002,023 (electronically filed) – U.S. Patent No. 6,770,748 entitled BICYCLONUCLEOSIDE AND OLIGONUCLEOTIDE ANALOGUE and owned by Santaris Pharma.  Filed June 18, 2012, perhaps by Isis.

(3) 95/002,024 (electronically filed) – U.S. Patent No. 7,707,823 entitled METHOD AND APPARATUS FOR MANIPULATING AND DILUTING INTERNAL COMBUSTION ENGINE EXHAUST GASES and owned by Leseman Davis, LLC.  Filed June 19, 2012.

(4) 95/002,025 (electronically filed) – U.S. Patent No. 7,320,031 entitled AUTOMATIC, PERSONALIZED ONLINE INFORMATION AND PRODUCT SERVICES and owned by Personalized User Model (PUM).  Filed June 20, 2012, perhaps by Google.  The ‘031 patent is currently the subject of a litigation styled Personalized User Model v. Google (Case No. 09-cv-525 (D. Del.)).

(5) 95/002,026 (electronically filed) – U.S. Patent No. 7,917,401 entitled SYSTEMS AND METHODS FOR OBTAINING HEALTH AND FINANCIAL INFORMATION WITH A HANDHELD DEVICE and owned by Epic Technology.  Filed June 20, 2012, by eBay.  The ‘401 patent is currently the subject of a litigation styled Epic Technology v. Shapsavvy (Case No. 2:12-cv-249 (D. Utah)).

(6) 95/002,027 (electronically filed) – U.S. Patent No. 8,073,744 entitled METHOD TO PROVIDE LIQUID FUNDS IN THE ONLINE AUCTION AND MARKETPLACE and owned by Venture Lending & Leasing VI.  Filed June 22, 2012, by Capital Access Network.

(7) 95/002,028 (electronically filed) – U.S. Patent No. 7,790,953 entitled SOYBEAN SEED AND OIL COMPOSITIONS AND METHODS OF MAKING SAME and owned by Monsanto.  Filed June 22, 2012, by DuPont.

(8) 95/002,029 (electronically filed) – U.S. Patent No. 7,925,531 entitled METHOD OF DELIVERING GOODS AND SERVICES VIA MEDIA and owned by TrialCard Systems.  Filed June 22, 2012.  The ‘531patent is currently the subject of a litigation styled TrialCard Systems v. P.S.K.W. et al. (Case No. 3:11-cv-5693 (D.N.J.)).

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Check out PLI’s Summer Schedule of Patent Law Events!

There is no better sign that summer has arrived than the recent heat wave blanketing the U.S. While making summer plans of barbecues and vacations, don’t forget that there are a handful of great patent law CLE programs being hosted by PLI all summer long. From introductory patent law basics to the complexities of the AIA’s implementation, there is a seminar available for patent law practitioners from across the spectrum.

Understanding Patent Law 2012: June 29, 2012 –  The morning discussion of fundamental patent principles, including what is patentable and how to prosecute and protect patents, establishes an important foundation for the topics that follow throughout the afternoon.  Patent opinions, patent licensing, and patent issues that arise in the context of transactions such as mergers and acquisitions will be covered.  In addition, a broad overview of patent litigation, including coverage of recent case law, will be addressed.  In-house counsel, general attorneys and business managers will learn to spot key patent issues that may face their clients and/or organizations and will learn what steps need to be taken next.

(SF) Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing: July 11 – 13, 2012 – This program is directed to patent attorneys, litigation attorneys and patent agents with or without a Patent Office registration number, or little patent experience. It will focus on teaching the basics of claim drafting, patent application preparation and prosecution, as well as a review of recent developments in the law. A litigator’s perspective is also presented to show how drafting and prosecution can influence the development, and often the outcome, of subsequent patent litigation. The clinics offer a unique supplement to the kind of hands-on mentoring that senior attorneys are hard-pressed to provide to less-experienced attorneys and agents.

Patent Bar Review 2012: Boston, July 11-15, 2012; Chicago, August 7-11, 2012 – In clear, concise, right-to-the-point language, this information-packed course leads you through the intricacies – and around the traps – of the Patent Bar Exam. You’ll get the hard facts, test-taking tips, sample questions and answers, and intense practice exams that mirror what you’re going to face when you sit down to take the real thing. Our PatWare software almost exactly predicted the current format of the Exam by many years. PatWare has now been expanded, updated and Web-connected to play an even more critical and informative role in your preparation.

Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing: New York, July 19-20, 2012; San Francisco, August 20-21, 2012 – In this advanced two-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, you will receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls. Guidance will be provided on the America Invents Act and its implementation by the Patent and Trademark Office, including the new post-grant review and inter partes review systems. Course material will include sample problems and model solutions.

(NY) Prior Art, Obviousness, and the America Invents Act in 2012: July 23, 2012 – This program will allow you to obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and explore the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!