Patent Law Practice Center

Reissue & Reexam Live Blog: Litigation Strategies

Next up is Scott McKeown of Oblon Spivak, writer for Patents Post Grant and Practice Center Contributor.  He discussed patent reexamination as a litigation tool.  Some highlights from his presentation…

1. Reexamination v. Litigation Standards: A huge benefit of reexamination with concurrent litigation is in the lower standards. No presumption of validity, preponderance of evidence standard and broadest reasonable claim interpretation.
2. Patents that are ideal for reexamination (invalidity purposes): broad claims, patents subject to inter partes reexam, predictable arts (KSR), and patents with alternative basis for attack.
3. Patents that are less ideal (invalidity purposes only): famous products (TiVo, Plavix, iPhone), unpredictable arts (Chem, Bio/Pharma), large portfolios (Rambus), portfolios with active continuations.  However complete invalidity is only ONE of MANY litigation purposes. Read the rest of this entry »

Reissue & Reexam Live Blog: Petition Practice in Patent Reexam From USPTO Perspective

Next speaker is Mr. Kenneth Schor of the USPTO’s Office of Patent Legal Administration (OPLA).  He is discussing petition practice in patent reexamination from a USPTO perspective. He says that a petition should include:a statement of the type of relief requested and the authorizing provision of the rules, statute, etc.; a statement of the facts; an identification of the points that are to be reviewed; and the fee, where required, to avoid summary dismissal (it’s recommended that a petition include a general authorization to charge deposit account, in case relief can be granted only based on a regulation requiring a higher fee than submitted). Read the rest of this entry »

Live Blog: PLI’s Reissue & Reexamination Strategies & Tactics With Concurrent Litigation

PLI’s Reissue and Reexamination Strategies and Tactics with Concurrent Litigation kicked off this morning.  First up is Todd Baker of Oblon Spivak.  In his Reissue overview, Baker explains that common bases for filing a reissue application include: the original patent claims are too narrow or too broad, the disclosure contains inaccuracies, the applicant failed to assert or incorrectly asserted foreign priority, and/or the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications.  In his overview of Ex Parte Reexam, Baker explains ex parte reexams can be initiated by patent owner, third parties (may remain anonymous); or Director. He says requests must be based on prior art patents and printed publications; requests cannot be based on public use, sale priority of invention or derivation; and claims many not be broadened in any request.  He explains that reexamination of patent claims will result in targeted claims being cancelled; narrowed; or confirmed.  Baker went on to discuss pitfalls to avoid both in Reissue and Ex Parte Reexam.

Pitfalls to avoid in Reissue (oath):

1. The error must be specific.  Insufficient for oath to merely state: “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
2. Insufficient to merely reproduce the amended claims and assert that the error is evident from the amendment
3. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
4. Preparing oath not a ministerial act
5. Adding a dependent claim to hedge against possible invalidity of original claims does not constitute an error correctible by reissue. Ex parte Tanaka
6. If the basis of the error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy s 251. Read the rest of this entry »

DNA Patents Dominate Reexamination Requests Filed Week Of January 24, 2011

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

In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing.  Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).

Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).

The following inter partes requests were filed:

(1)         95/001,528 (electronically filed) – U.S. Patent No. 7,69,133 entitled SYSTEM AND METHOD FOR DEVELOPING RULES UTILIZING IN A KNOWLEDGE MANAGEMENT SYSTEM and owned by Wellogix Technology Licensing.  Filed January 26, 2011. Read the rest of this entry »

A New Doctrine of Equivalents? CAFC Defines “Use” Under §271

Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article on the recent Federal Circuit decision Centillion Data Systems, LLC v. Qwest Communications International, Inc..  In the article, Quinn discusses the opinion and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a).

On January 20, 2011 the United States Court of Appeals for the Federal Circuit issued a precedential opinion in Centillion Data Systems, LLC v. Qwest Communications International, Inc., in which the district court was affirmed in part and reversed in part. Of particular note here is the determination of the meaning of “use” as that term is used in 35 U.S.C. 271(a). The Federal Circuit, per Judge Moore (with Judges Lourie and Linn joining) acknowledged that the Court has never directly addressed the issue of infringement for “use” of a system claim that includes elements in the possession of more than one actor, thereby making the specific issue a question of first impression. Read the rest of this entry »