Deciding Whether To Stay A Case Pending Reexamination

Scott Daniels, Partner at Westerman, Hattori, Daniel & Adrian and Practice Center Contributor, sent in this article discussing the standard applied by trial judges when determining whether to stay a patent infringement case pending reexamination.  According to the article, rather than applying the “universally accepted standard” of clear and objective, the standard is commonly applied in an extremely subjective manner. Daniels examines whether the problem is with the trial judges or with the standard itself.

The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective.  A court is to apply its discretion in light of the following factors:

(1)   whether discovery is complete and a trial date is set, i.e., is the case in its early stages;

(2)   whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and

(3)   whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused  infringer for some tactical reason.

Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion. Read the rest of this entry »

False Marking Statute Ruled Unconstitutional by Ohio District Court

Mayer Brown’s Partner James R. Ferguson passed along this article he wrote with colleagues Richard M. Assmus and Emily C. Melvin on the recent Unique Product Solutions v. Hy-Grade Value decision wherein Judge Polster of the U.S. District Court for the Northern District of Ohio struck down the false marking statute as violating the “Take Care” Clause of Article II of the U.S. Constitution. The article discusses how the decision could affect the numerous false patent marking cases pending in district courts throughout the country.

The Northern District of Ohio has become the first court to strike down the qui tam provision of 35 U.S.C. § 292. Employing the “Take Care” clause of the Constitution, Judge Dan Aaron Polster ruled on February 23, 2011, that the false marking statute lacks the statutory controls necessary to pass constitutional muster. Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc., Case. No. 5:10-cv-1912 (N.D. Ohio, Feb. 23, 2011). Read the rest of this entry »

Challenges To Two More Intellectual Venture Patents, Among The Reexamination Requests Filed Week Of 2/21/11

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

Last week Xilinx requested reexamination of one of the five patents that Intellectual Ventures has accused Xilinx and three other companies of infringing (here).  The same lawyer who filed that request for Xilinx has now requested reexamination of a second Intellectual Ventures patent – U.S. Patent No. 5,687,325 – from the same case, as well of a third Intellectual Ventures patent not in the case, U.S. Patent No. 6,252,527 (see ex parte Request Nos. (8) & (9)).  Since the requests are for ex parte, not inter partes, reexamination, the identity of the real party in interest need not be disclosed.

In August EVM Systems sued Cordis, Boston Scientific and Abbott for infringement of two patents related to stents having a “slotted memory metal tube,” U.S. Patent Nos. 6,780,175 and 7,037,321.  Last week, Cordis requested reexamination of the ‘175 patent and Abbott requested reexamination of the ‘321 patent (see inter partesreexamination Request No. (5) and ex parte Request No. (15)). Although inter partes reexamination was possible for both patents, lawyers for Abbott chose ex parte reexamination. The choice between ex parte and inter partes reexamination is sometimes complex and one addressed in a recent post (here). Read the rest of this entry »

The America Invents Act of 2011: Reform or Regression?

As most of us in the patent community know, this week the Senate is debating the “Patent Reform Bill 2011” aka “The America Invents Act of 2011”.  Based on the information being circulated in the blogosphere, it appears Patent Reform is likely to be a reality.  Whether that is a good or bad thing is highly debatable.  I have compiled a list of blog posts from the last 48 hours that highlight what has occurred during the Senate debate thus far and what the various players have to say about the legislation.  In no particular order, here they are….

1.  Senate votes to strip down patent reform bill (Reuters)

2.  Senate debates patent reform as more voices weigh in (Washington Post)

3.  Patent Reform Gaining Steam, Debate Continues in U.S. Senate (IPWatchdog)

4.  Patent Reform – An Important Amendment to the Bill (Patently-O)

5.  Senate Votes on Two Patent Reform Amendments (Senatus)

6.  Patent Reform Amendments Introduced (via Patents Post Grant)

7.  Delivering innovation and jobs through patent reform (The Hill’s Congress Blog)

Cost Benefits Of Concurrent Patent Reexamination

The following post comes from Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action. Read the rest of this entry »