Join Us For Prior Art & Obviousness 2011 June 6, 2011

Prior art, 35 USC 102, continues to be a complicated concept for patent practitioners and their clients, undergoing evolving interpretations in the PTO and CAFC and even statutory reform. For every practitioner, it is a necessity to stay current on this touchstone of patentability. How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is here today, could be gone tomorrow, but can possibly be recovered mean in terms of prior art. And, in the age of biotech and nanotech, what is truly enabled? Is it a catalog listing, or even a peer review paper? Join us for PLI’s Prior Art & Obviousness 2011 on June 6, 2011 in New York or on July 25, 2001 in San Francisco (also available via live webcast) where you will obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and a look at enacted or proposed statutory revisions. And let’s not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. KSR (already 4 years old) will be explored from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSRpigeon hole!

Click here for more information on Prior Art & Obviousness 2011: Current Trends in Sections 102 & 103.

We will have highlights here on the Practice Center so tune in if you can’t make the program!!

Attacks On Two LSI Logic Video Decoder Patents Among Reexamination Requests Filed Week Of 4/25/11

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

LSI Logic is pursuing an infringement suit against Vizio in the Central District of California (see ex parte Request Nos. (4) & (5)).  On Thursday, reexamination was requested for two of the patents in that suit, in all likelihood requested by Vizio.

Also, Micro-Probe requested reexamination of another FormFactorpatent – as previously reported, the two companies are in litigation in the Northern District of California (see inter partes Request No (3)).  And Funai requested reexamination of one of the Freescale computer patents in the case between the two companies in the Western District of Texas (see ex parte Request No (7)). Read the rest of this entry »

You filed suit on a patent with a pending SNQ? Really?

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Orinda Intellectual Properties filed suit on April 25, 2011 against a long list (50!) of electronics companies alleging infringement of US 5,438,560 purporting to cover recording and reproducing optical information on Blu-ray discs. Fine, lots of patents in the Blu-ray arena.

But a quick look at public PAIR shows that the USPTO found a substantial new question of patentability on March 7, 2011 and ordered a re-exam of all 3 claims of the ’560 patent.

Call me old-fashioned, but shouldn’t you get that substantial question of patentability straightened out before suing fifty companies for patent infringement?  Maybe there is some strategy I am not aware of (willfulness?), but I can imagine a judge being pretty upset with the plaintiff if the patent goes down in flames at the USPTO.

Implementing the Biologics Price Competition and Innovation Act?

Alexandra McTague, of DLA Piper, sent in this article discussing whether the final rules the FDA implements for follow-on biologics will actually end the debate surrounding the Biologics Price Competition and Innovation ACT (BPCIA).

The vigorous debate over the Biologics Price Competition and Innovation Act (BPCIA), which aims to provide an expedited approval framework for follow-on biologics, will likely inform the final rules the FDA implements, and those rules will determine the business strategies of innovator companies and the extent to which generic companies use the BPCIA.

Biosimilars vs. interchangeable biologics

Under the BPCIA, generic biologics can be characterized as “biosimilar” to or “interchangeable” with innovator products. Both require clinical studies for approval, with interchangeability requiring a higher showing. Only those follow-on biologics designated as “interchangeable” can be automatically substituted by a pharmacy for the innovator’s product. As a result, generic companies will have to market biosimilars to boost prescriptions and sales. Thus, when seeking approval, generic companies will weigh the cost of marketing biosimilars against the cost of the yet-to-be-determined clinical testing requirements for interchangeables. If those requirements are too onerous, the generic company may instead choose to pursue a Biologic License Application (BLA), which has the benefit of circumventing the innovator company’s marketing exclusivity. Read the rest of this entry »

USPTO Proposes Overhaul To Patent Reexamination Proceedings

On Monday, April 25, 2011, the USPTO published a proposal in the Federal Register enumerating proposed changes being considered by the agency to streamline the proceedings governing ex parte and inter partes reexamination proceedings.  Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here). Read the rest of this entry »