Scott McKeown on Post Grant Strategies
The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.
Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:
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The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of the seminar’s Course Handbook.
Commentary on Mayo v. Prometheus
On March 20, 2012, the U.S. Supreme Court issued a unanimous decision in Mayo Collaborative Services v. Prometheus Labs., Inc., reversing the Court of Appeals for the Federal Circuit, holding that the patented Prometheus claim methods were invalid as they pertained to ineligible subject matter. The issue before the Court was whether the claims did more than simply describe laws of nature. Justice Breyer wrote the Court’s decision and emphasized the specific question, “Do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?” The underlying policy concern was whether such patents would inhibit future innovation. As stated in the Court’s decision,
…there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to “apply the natural law,”or otherwise forecloses more future invention than the underlying discovery could reasonably justify. The patent claims at issue implicate this concern.
In order to better understand the complexities of the Mayo Collaborative Services v. Prometheus Labs., Inc. decision, we have collected articles written by patent practitioners and Practice Center contributors about the case. Check out these fantastic case summaries and opinion pieces: (more…)
03.21.12 | patent eligibility, Patent Litigation, Patent Policy, posts, Supreme Court Cases | Mark Dighton
David Boies Argues for a Second Bite of Apple
Written by Brandon Baum, of Agility IP Law and Practice Center Contributor.
Readers of this blog will recall that Mirror Worlds won a $625 million jury verdict against Apple, only to have it taken away in post-trial motions. The trial judge found that Mirror Worlds had neglected to introduce evidence of direct infringement of the asserted claim by any end-user, observing “Mirror Worlds may have painted an appealing picture for the jury, but it failed to lay a solid foundation sufficient to support important elements it was required to establish under the law.” Therefore, the damage award could not be sustained and Mirror Worlds was left with nothing.
Mirror Worlds retained David Boies of Boies, Schiller, who argued for reversal before the Federal Circuit on March 8, 2012. Boies was somewhat hamstrung, however, because the record is the record and good oral advocacy cannot overcome an absence of evidence that end-users of Apple products actually used the patented invention. So Boies took a clever tack—combing the record for evidence that Apple itself had infringed, and therefore the trial court was in error, at least to the extent that it concluded that there was no evidence of infringement by any end-user.
03.21.12 | Patent Litigation | Mark Dighton
Yahoo Threatens Facebook with Patent Infringement Claims
In one of the first patent fights within the social media arena, Yahoo claims that 10-20 of its technology patents are currently being infringed by Facebook. The New York Times DealBook reports that Yahoo has alerted Facebook that it will be forced to engage in a patent infringement lawsuit unless Facebook agrees to enter a patent licensing agreement. The patents in question cover technologies relating to advertising, the personalization of Web sites, social networking and messaging.
The company may have lost its luster in comparison to its online peers like Google, Facebook, and Twitter, but Yahoo’s intellectual property may in fact be peerless. It appears that of the patents in question, some of them include one of the first patents ever awarded to Yahoo, and their patent portfolio isn’t one to just shrug off. According to IEEE Spectrum, a technology publication, it ranked Yahoo’s patent portfolio in 2011 as being the most valuable among those for communications and Internet services. (more…)
02.29.12 | patent infringement, Patent Licensing, Patent Litigation, posts | Mark Dighton
Patent Law Institute Live Blog: Litigating Against NPE’s
Welcome to day 2 of the Patent Law Institute! The live blog will continue throughout the day, as will the live tweeting (@plipatentlaw, #PatentLawInstitute). The first panel we are reporting from this morning is entitled, “Litigating Against Non-Practising Entities,” and features P. Anthony Sammi, Partner at Skadden, Arps, Slate, Meagher & Flom LLP concentrating his practice on litigating intellectual property cases, particularly high-technology patent cases, at the trial level. Sammi shares proven strategies for defeating NPEs and explains the difference about litigating against an NPE. If you missed out today, you’ll be able to see this panel live in San Francisco on March 19-20th. Here are the highlights: (more…)
02.17.12 | Federal Rules, Patent Law Institute, Patent Litigation, posts | Mark Dighton
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04.10.12 | Patent Litigation, Patent Prosecution, posts | Mark Dighton