Patent Law Practice Center

Patent Reform Update: House Debates Patent Reform

On Wednesday, Representative Lamar Smith, introduced th House’s version of a patent reform bill to the House of Representatives.  The House bill is largely similar to the Senate Bill S. 23. passed earlier this month.  However, there are a few changes in the House bill that some industry representatives oppose, particulary on prior use rights and post-grant reviews.  Will this opposition reignite debate over patent reform?  Here is what the blogosphere has to say about the House’s patent reform bill and yesterday’s hearing…..

1.  Patent Overhaul Unveiled in U.S. House of Representatives (Bloomberg)

2. Patent Reform Introduced in House (Reuters)

3.  Sensenbrenner to Kappos: Prior User Rights is Poison Pill (IPWatchdog)

4. House Weighs in with its Version of Patent Reform (Morrison Foerster)

5.  House patent reform bill sparks debate (EEtimes)

6.  Deep Divisions Between Firms Large and Small Remain Over House Patent Reform Bill (BroadbandBreakfast.com)

7.  BIO Commends Launch of House Patent Reform Process (Sun Herald)

8.  Patent Reform 2011:  House of Representatives Bill No. H.R. 1249 (PatentlyO)

Should the PTO’S Reexamination Analysis Impact ITC Cases?

Until now, the  CAFC has not answered the question of the level of consideration a court or the ITC should give to an earlier reexamination and the effect those reexamination findings should have in the present proceeding or investigation.  Scott Daniels, Partner at Westerman Hattori Daniels & Adrian and Practice Center Contributor, passed along this article discussing an investigation pending at the ITC wherein the Commission has raised this question.  Daniels weighs in on whether the CAFC will take this opportunity to answer this looming question.

In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG.  This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM.  As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues. Read the rest of this entry »

America Invents Act: First to Invent v. First to File System

On March 30, 2011, the House is scheduled to debate The America Invents Act, the patent reform bill passed by the Senate 99 to 5 on March 8, 2011.  There are some differences in the House patent reform bill from Senate bill S.23, but the provision that has undoubtedly generated the most debate, that is the switch from a first-to-invent to a first-to-file system, remains in the House’s proposed legislation. I recently listened to a One-Hour Briefing in which Allan A. Fanucci, Partner at  Winston & Strawn, discussed the implementation of US Patent Laws under the current 35 U.S.C. s 102(a) as compared to what the statutory bars will be under the first to file system. Here are some highlights from the briefing…

First to File (proposed for US)

• The first party to file has the opportunity to obtain the patent
• The earlier party’s application becomes prior art to all later applicants both for novelty and obviousness (or lack of an inventive step)
• Exception: prior application was derived from the later filer
• While Interferences are being discontinued except for derivation, documenting prior inventions should be important in showing that invention was not derived from others

Read the rest of this entry »

Auburn V. IBM Among The Reexamination Requests Filed Week Of March 14, 2011

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

Auburn v. IBM is not a “sweet-sixteen” match-up.  It’s an infringement litigation pending in the District Court in Alabama since 2009.  IBM has now requested reexamination of Auburn’s patents – U.S. Patent Nos. 7,194,366 & 7,409,306, both claiming ways of estimating the reliability of integrated circuits and thereby reducing the cost of making chips (see inter partes Request Nos. (2) & (3)).

Xilinx continued its assault on Intellectual Ventures’ patents – this week requesting reexamination of U.S. Patent No. 7,080,301 (see inter partes Request No. (7)), and perhaps U.S. Patent Nos. 6,065,880 and 6,687,865 (see ex parte Request Nos. (16) & (18)). The PTO records are, as yet, unclear regarding the requester of the latter two requests, but it appears to have been Xilinx.

Apple, the clear leader in recent times in the number of requests filed, continued its practice of seeking reexamination of each patent-in-suit whenever it is sued (see ex parte Request Nos. (10), (11) & (13)).  Other noteworthy requests include those filed against Lincoln Globaland 3M patents (see inter partes Request Nos. (1) & (11) and ex parteRequest No.(1)). Read the rest of this entry »

Recent Developments and Potential Changes in the Litigation of False Marking Claims Under 35 U.S.C. § 292