Patent Law Practice Center

PLI’s Patent Law Institute is Next Week!

PLI’s 5th Annual Patent Law Institute is next week on February 17-18 and the Patent Law Practice Center is your one-stop-shop for all things Institute related.  If you’re not joining us live in NYC or on the web, come here next Thursday at 9:15am to see a live stream of former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Institute.  Also be sure to check back in to the Practice Center to read my live blog from the Institute.

The Institute will cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and strategic & transactional lawyers. The two-day schedule includes six one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigation and strategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups. In just two days, you will learn the important developments and best practices in each area. And earn Ethics credit, too! You can design the Institute schedule that best meets your individual practice needs. Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outside lawyers.

Acer & Microsoft Attacks On Mediostream Video Recording Patent Among Reexamination Requests Filed Week Of January 31, 2011

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

On January 7, 2011, Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 covering a way of recording video data directly onto disks.  Now, both Acer and Microsoft have filed their own requests for reexamination of the ‘508 patent (inter partes Request Nos. (2) & (5)).  Each of these new requestors has been accused by MedioStream of infringing the ‘508 patent.  These requests continue a trend among the huge electronic companies, especially Apple, of using reexamination to reply to infringement allegations.

As an update to our posts of June 30 & November 9, 2010 and January 19, 2011 – regarding inter partes reexamination requests filed by Whirlpool against four LG refrigerator patents – Judge Garrett Brown, in a parallel infringement action between the parties in the District Court of New Jersey, has denied Whirlpool’s motion to stay the case pending completion of the reexamination proceedings.  Judge Brown explained that inter partes reexaminations “could take more than five years if the parties fully exhaust their appeal rights” and that delay could cause LG irreparable loss because the parties are direct competitors: “[t]he goodwill lost during the reexamination proceedings could be difficult to measure and difficult to compensate fully with money damages after trial.” Read the rest of this entry »

The Gold Seal of Ownership: Stanford v. Roche and Ownership of Federally Funded Research

Mary Hess Eliason, an Associate of Birch, Stewart, Kolasch an Birch, sent in this article she wrote discussing the Stanford v. Roche case.  Eliason highlights the issues being brought before the Supreme Court and the possible effects of this case if Stanford prevails.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law. [1] The case of Stanford v. Roche demonstrates that this may not be true in the context of federally funded research.  The issue being brought before the Supreme Court is whether, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.[2]                                                    

The facts of Stanford v. Roche show a commonly occurring relationship between inventors, research institutions and collaborators, especially in the biotechnological field. [3]In 1988, inventor Holodniy joined a laboratory at Stanford University as a research fellow.  Upon joining the laboratory, Holodniy signed an agreement stating “I agree to assignor confirm in writing to Stanford . . . right, title and interest in . . . such inventions as required by Contracts or Grants”.  Read the rest of this entry »

Three References PLUS Predictable Variation Doom Utility Lighter Claims

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

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious. Read the rest of this entry »

Reissue & Reexam Live Blog: Ethical Considerations

The last panel of the day – Ethical Considerations in Reissues and Reexaminations. The panel includes Gerald Murphy, Jr., Partner at Birch Stewart Kolasch & Birch and Practice Center Contributor, and Barbara Mullin of Akin Gump Strauss Hauer & Feld.  Here are some highlights from the panel:

• Reissue and Reexam overlap where the error is overly broad claiming in view of prior art.  If patentee becomes aware of prior art that does not invalidate the claims but does raise a substantial new question of patentability and there are no other errors in the patent that render it wholly or partly inoperative or invalid, only option is ex parte reexam.  If patentee can identify another error in addition to new prior art, Reissue becomes available. 
• Both Reissue and Reexam can give rise to charges of inequitable conduct.
• Patents being reissued and reexamined may present unique issues because: they are often very important, the amount of available “information” potentially material to patentability might be much greater than the information available during the original prosecution, and/or parallel litigation is not unusual. Read the rest of this entry »