Patent Law Practice Center

Reexamination Request Against MobileMedia Smart-Phone Patent, Among Those Filed Week Of 4/4/11

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

An ex parte request has been filed – probably by HTC – against one ofMobileMedia Ideas’ 11 smart-phone patents that are the subject of its pending infringement litigation against HTC (see ex parte Request No. (2) for U.S. Patent No. 5,915,239).  MobileMedia obtained the ‘239 patent from Nokia Capital.  Reexamination was ordered last month (90/011,436) for one of the other MobileMedia patents-in-suit, U.S. Patent No. 6,253,075; reexaminations against the other nineMobileMedia patents might be pending as well.  MobileMedia has two parallel smart-phone infringement law suits pending, one against Apple, and one against RIM.

On the heels of its earlier requests against three XRPT patents, eBayrequested reexamination of two additional XPRT patents (see inter partes Request Nos. (2) & (3)).

Finally, Beckman Coulter requested reexamination of a GeneOhm Sciences Canada patent claiming a method for detection of certain methicillin-resistant bacteria (see inter partes Request No. (5)). Read the rest of this entry »

Patent Reform Update: House Reverts To Senate Inter Partes Review Standard

Scott McKeown, Practice Center Contributor and Partner at Oblon Spivak, sent in this article discussing the Manager’s Amendment to the House’s patent reform bill, H.R. 1249.  The Amendment removes the Substantial New Question of Patentability (SNQ) standard for Inter Partes Review.

SNQ Standard Removed by Proposed Manager Amendment

Yesterday, the Chairman of the House Judiciary Committee circulated a Manager’s Amendment to H.R. 1249. (here).  There were several notable changes to the proposed Inter Partes Review and Post Grant Review proceedings.

Perhaps the most noteworthy change in the manager’s amendment from a post grant perspective is the removal of the Substantial New Question of Patentability (SNQ) standard for Inter Partes Review. Previously I explained that the SNQ standard was adopted by the House for Inter Partes Review over the proposed “reasonable likelihood of success” standard of Senate bill S.23. The House adoption of the more liberal SNQ standard was not only unpopular, but rendered other aspects of the bill wasteful. Fortunately, this change has been undone by the manager amendment. Read the rest of this entry »

USPTO Updates Registration Exam for Patent Practitioners

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

“Patent applicants and examiners will benefit from the updated registration examination because newly registered patent attorneys and agents will have demonstrated familiarity with the most current patent laws, rules and procedures,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

All applicants wishing to practice in patent cases before the USPTO must pass the registration exam consisting of 100 multiple choice questions. The revised exam questions will be based on the Manual of Patent Examining Procedure (MPEP) Edition 8, Revision 8, along with other published USPTO policy and procedure reference materials. Administration of the previous version of the registration examination ceased April 4, 2011.

Click here for the full IPWatchdog article.

Current Developments in the Trilateral Patent Offices

James M. Heintz, a partner in the Intellectual Property and Technology practice group at DLA Piper, sent in this article discussing patent harmonization among the European Patent Office, the Japanese Patent Office and the United States Patent and Trademark Office.

In an informative discussion in Washington, DC , the heads of the three trilateral patent offices provided insight into the direction they are heading and summarized recent developments in the three offices.

The Honorable Benoit Battistelli, president of the European Patent Office, the Honorable Yoshiyuki Iwai, commissioner of the Japanese Patent Office, and the Honorable David J. Kappos, director of the United States Patent and Trademark Office, met in late 2010 in a session sponsored by the Intellectual Property Owners Association.

President Battistelli began his remarks by expressing his surprise that more applicants were not using the EPO’s fasttrack procedure (also referred to as the Patent Prosecution Highway). President Battistelli pointed out that fast-track requests comprised only 7 percent of EPO applications in the last year (16 percent of which were applications originating from the US), despite the fact that requesting fast-track treatment does not require any fees and the request is simple. He also noted the need to raise the bar for greater legal certainty that patents issued by the EPO would be enforceable. Finally, President Battistelli reiterated his support for European patents and centralized litigation. Read the rest of this entry »

Court Vacates $626 Million Jury Verdict Due To Plaintiff’s Fundamental (And Easily Correctable) Errors

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

Question: How do you turn this

Into this?

Answer: By failing to establish each and every requirement of the patent law on the record at trial in a manner sufficient to sustain the jury’s verdict.

Mirror Worlds (MW) accused Apple of infringing three patents allegedly used in Apple’s “Cover Flow,” a feature familiar to ipod and Mac OS users. The asserted claims of the three patents-in-suit included a variety of method and system claims, and MW relied on theories of both direct and indirect infringement, and sought to prove infringement both literally and, for some limitations, under the doctrine of equivalents. The jury found infringement and awarded MW a total of $625.5 million in damages. However, the trial judge overturned that verdict and granted judgment instead to Apple. Why? Did MW overlook some subtle nuance of patent law? Was the technology just too complex for the jury to understand? No, the explanation is far far simpler than that. Read the rest of this entry »