Patent Law Practice Center

10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them

Brandon Baum, of Baum Legal and Practice Center Contributor, will be speaking about litigation issues relevant to patent prosecution at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on July 8th in San Francisco.  Brandon shared with us an article he wrote for the Course Handbook entitled 10 Mistakes That Will Kill Your Patent in Litigation And How To Avoid Them. The following is an excerpt from the article:  

It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1

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Selected Aspects Of The Impact Of Patent Application Drafting And Prosecution

Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation.  Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011.  The following is an excerpt from the article:

Introduction

Issues often arise during patent prosecution which impact the course of subsequent patent litigation.  This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.

A.   Background

With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” Read the rest of this entry »

RIM Challenge of Two SimpleAir Patents Among the Reexamination Requests Filed Week of 5/9/11

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

RIM has requested reexamination of SimpleAir’s U.S. Patent Nos. 6,021,433 and 6,735,614 that claim contact alerts for incoming messages (see ex parte Request No. (15) & inter partes Request No. (5)).  SimpleAir has accused Apple, RIM, Facebook and a number of others in the Eastern District of Texas of infringement of the ‘614 and ‘433 patents, as well as two other patents.

The week also saw yet another round in the war between Abbott Diabetes Care and DexCom over analyte sensors (see ex parte Request No. (5)).

And Square, Inc. requested reexamination of three REM Holdings patents for reader cards for cell phones (see inter partes Request Nos. (2), (3) & (4)), which are the subject of an infringement dispute between those companies in the Eastern District of Missouri. Read the rest of this entry »

Congress Considers Changes to Rule 11 Sanctions

We are pleased to announce the addition of  R. David Donoghue to our list of distinguished Contributors.  He is a Partner in Holland & Knight’s Intellectual Property Group focusing upon intellectual property litigation and particularly upon patent disputes.  Dave just sent along this article he recently posted on his blog, Chicago IP Litigation, discussing the changes to Rule 11 sanctions being considered by Congress.  The article details the proposed amendments and the testimony supporting and opposing the H.R. 966 Bill.

Congress is currently considering revision Rule 11 sanctions, including:

1. Removing the existing 21 day “safe harbor” provision which requires that you send your motion to the opposing party and give them 21 days to remedy the alleged Rule 11 violation before filing the motion with the Court; and
2. Making an award of fees and costs related to a winning Rule 11 motion automatic, instead of discretionary.

The Federal Bar Association (of which I am a member) has published a call for comment that sets out both sides of the issue well.  It follows below.  I can understand the inclination to make fees and costs automatic, but the 21 day “safe harbor” serves a valuable gatekeeping role.  It avoid clogging the federal courts with Rule 11 motions that could be fixed with notice of the alleged deficiency.

Click here to read Donoghue’s full article.

Microsoft v. i4i – Awaiting a Burdensome Decision by the Supreme Court

In the Microsoft Corp. v. i4i, the Supreme Court must determine whether the burden of proof for parties alleging patent invalidity should be changed from a clear and convincing standard to a preponderance of the evidence standard.   Oral arguments took place on April 18, 2011 and the Court’s decision is expected by the end of June 2011.  While we wait for this potentially precedential opinion, Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP, brings us up to speed with a comprehensive discussion on the history of the case, the oral arguments and possible outcomes.

In the pending case of Microsoft v. i4i, the Supreme Court must decide whether the Federal Circuit’s requirement of clear and convincing evidence is proper for an invalidity defense, even though the prior art relied upon by the Defendant was not considered by the Patent and Trademark Office (PTO).

The oral arguments were heard April 18, 2011. Prior to the oral arguments, the smart money was on Microsoft , but based on comments by the Justices during oral arguments, it is not clear that Microsoft has an advantage going forward. Read the rest of this entry »