Patent Law Practice Center

Hoffman & Baron: The Current State of Patent Law

During late 2009 – 2010, we saw a significant number of remarkable decisions from the Supreme Court and the Federal Circuit that impacted the patent community.  From Bilski v. Kappos, to Forest Group v. Bon Tool, to Wyeth v. Kappos, to Ariad Pharmaceuticals v. Eli Lilly, just to name a few.  The following article discussing these decisions was written by Robert Neuner, Partner with Hoffman & Baron and presenter at PLI’s upcoming 5th Annual Patent Law Institute.  Here is an excerpt and a link to the article.

This paper discusses a range of cases decided in late 2009 and 2010 that reflect the current state of the law on issues with which each of us should have at least some familiarity.  Having decided Bilski, the Supreme Court has one again exercised its oversight over the Federal Circuit.  It will review three Federal Circuit decisions concerning the Bayh-Dole Act and the proofs necessary to establish (a) inducement of infringement and (b) patent invalidity.  There is also the blockbuster Myriad case now wending its way to a decision by the Federal Circuit. Read the rest of this entry »

RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Late last year MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data.  RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.

Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents.  (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent.  Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).

The following inter partes requests were filed:

(1)       95/001,525 (electronically filed) – U.S. Patent No. 7,777,783 entitled MULTI-VIDEO NAVIGATION and owned by Proximex.  Filed January 21, 2011, by VidSys, Inc.   The ‘783 patent is currently the subject of a litigation styled VidSys v. Proximex (Case No. 1:10-cv-1185 (E.D. Va.)).

Read the rest of this entry »

Foley & Lardner: Senate Introduces Patent Reform Act of 2011

On Tuesday, the Senate introduced the Patent Reform Act of 2011.  While the latest version is similar to previous patent reform bills, there are some significant changes made in the 2011 proposed legislation.  Our friends at Foley & Lardner sent in this alert discussing the new bill and how the House plans to address patent reform in 2011.

On January 25, 2011, Sens. Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa) introduced the latest bill on patent reform legislation—the Patent Reform Act of 2011.  According to Sen. Leahy, the new legislation is based on prior legislation introduced during the 109^thCongress, as well as compromises reached in March 2010 (the Managers’ Amendment to S. 515). A January 20, 2011 press release on Sen. Leahy’s Web site states, “[p]romoting economic growth continues to be a top priority for both Democrats and Republicans, and patent reform is part of that effort.” When introducing the bill, Sen. Leahy explained that the new legislation is intended to accomplish three primary goals: (1) transition to a first-to-file system; (2) improve patent quality; and (3) provide more certainty in litigation. The Act also includes provisions to limit standing and damages in false patent marking actions. However, Sen. Leahy did not directly address how he intends to resolve key differences with the House that carry over from last year’s stalled bill (S. 515), which contains many of the same provisions as the new bill. Meanwhile, the House has announced a new hearing that it will conduct on the link between patent reform and job creation, suggesting that it intends to obtain more input before considering legislative changes. Several of the key provisions of the recently introduced Senate bill are discussed in more detail below. Read the rest of this entry »

USPTO Warns Practitioners On Abusive Filings In Patent Reexamination

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

On January 10, 2011, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory. Read the rest of this entry »

The Evolution of Patent Licensing Laws in Japan

In this volatile global environment, more and more companies are licensing patents and patent applications outside of the US.  To get up to speed on recent amendments to Japan’s Patent Law, our friends at DLA Piper sent along this article outlining the changes that may effect the licensee.

Companies that have licensed or plan to license Japanese patents should be mindful of Japan’s 2009 Amendment to its Patent Law, proffering greater rights to licensees of patents and patent applications.

Before the Amendment

Prior to the Amendment, patent owners were required to register exclusive licenses (senyou-jisshiken) with the Japan Patent Office for the licenses to be effective. For non-exclusive licenses (tsujou-jisshiken), registration was optional. However, if a non-exclusive license was not registered, a licensee could face the loss of considerable rights, such as its ability to assert its license rights against a third party if the licensor sold the patent to another entity. However, registration required extensive disclosures, raising concerns among potential applicants that they might reveal business secrets. These disclosures were the primary reason nonexclusive licenses often were not registered. Read the rest of this entry »