Patent Law Practice Center

Attack By ebay On Automatic Auction Patents, Among 28 Reexamination Requests Filed Week Of 3/28/11

USPTO To Launch Prioritized Patent Examination Program May 4, 2011

The USPTO recently announced that the agency will launch it’s new prioritized examination system known as “Track One” on May 4, 2011.  Under the program, patent applicants can elect to accelerate examination of their patent applications (if the application meets certain requirements) filed on or after May 4, 2011.  The USPTO will then “prioritize” the handling of your patent application with a goal of reaching a final disposition within twelve months.  If “accorded special status”, the patent application will be placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached.  Final Disposition for a twelve month goal means: (1) mailing of a notice of allowance; (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the BPAI, (5) filing of a request for continued examination, or (6) abandonment of the application within 12 months from the date prioritized status has been granted.

To qualify for Track One prioritized status, an applicant must meet certain requirements: Read the rest of this entry »

AMP v. U.S.P.T.O.: Oral Argument at the Federal Circuit

Yesterday, the much anticipated oral argument in the AMP v. USPTO aka the Myriad Case took place at the Court of Appeals for the Federal Circuit.  Fortunately for us, Ryan B. Chirnomas, Partner at Westerman, Hattori, Daniels & Adrian attended the argument and has passed along this article summarizing the day’s events.

On April 4, 2011, the Appellant, Appellee and the U.S. Government presented oral argument before the Court of Appeals for the Federal Circuit in AMP v. USPTO, which deals with gene patenting.  The parties in this case are the Association for Molecular Pathology, along with many other medical organizations, doctors and patients on one side, and the U.S.P.T.O., Myriad Genetics, Inc., and the University of Utah Research Foundation on the other side.  Many amicus briefs have been filed as well.  The argument was heard by a panel consisting of Judges Bryson, Lourie and Moore, and was attended by approximately 200 people.   Due to the complexity of the subject matter and the presence of Government, the Court granted each side approximately 30 minutes of argument, instead of the usual 15 minutes.

Interestingly, although the parties seemed eager to discuss the merits, approximately half of the time for the Appellant and Appellee was spent discussing the issue of jurisdiction and standing.  In particular, Judge Moore seemed very interested in this issue.  The Appellants, led by Myriad, argued that there was no immediate controversy between the parties, since Myriad had not contacted any of the parties in over ten years.  However, Judge Moore questioned whether those parties previously threatened by Myriad were still refraining from making and using the claimed subject matter due to a continuing fear of litigation over the past decade.  Read the rest of this entry »

House Version Of Inter Partes Review & Wasted Time

Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant, sent in this article discussing to what extent inter partes reexamination will change if H.R. 1249, the House’s proposed patent reform legislation, is passed into law.

Inter Partes Review, 5 Months to a First Action?

Should the proposed patent reform legislation pass into law, inter partes reexamination will gradually cease to exist. In place of inter partes patent reexamination will be an entirely new mechanism known as Inter Partes Review.

Inter Partes Review will not be conducted by patent examiners of the Central Reexamination Unit, but instead by the Administrative Patent Judges of the Patent Trial & Appeal Board (now known as the BPAI). As the new proceeding is conducted by APJs, limited discovery practices will be provided. Beside these procedural changes, the substantive analysis remains largely the same. …at least in H.R. 1249. Read the rest of this entry »

Echostar Challenge To Northpoint Set-Top Box Patent Among 24 Reexamination Requests Filed Week Of 3/21/11

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

Friday afternoon EchoStar requested reexamination of Northpoint’sU.S. Patent No. 6,208,636 which claims a TV set-top box for processing multiple datastreams.(see ex parte Request No. (19)). Northpoint is suing EchoStar, DirecTV and Dish Network in the Western District of Texas for infringement of the ‘636 patent. According to Northpoint’scomplaint, Dish Network has used the claimed box for 14.1 million direct broadcast satellite subscriptions as of December 2009.

Reexamination was requested against AU Optronics’ U.S. Patent No. 7,125,157 (see inter partes Request No. (4)), probably by Sharp, though the accessible PTO records are not clear.  AU Optronics suedSharp earlier this month in Delaware for infringement of the ‘157 patent, as well as five other patents.

Formax and Prosure requested reexamination of four Patriot Universal Holdings patents related to machines for “molding foodpatties,” presumably hamburgers (see ex parte Request Nos. (6), (7), (8) & (9) – the two companies had been sued by Patriot in Wisconsin for infringement of the patents.  The same day Formax also filed in Wisconsin its own complaint for patent infringement against two additional companies. Read the rest of this entry »