Patent Law Practice Center

PLI’s Patent Law Institute Coming To A Location Near You!

PLI’s 5th Annual Patent Law Institute is on February 17-18 in New York (and via web) and on March 21-22 in San Francisco.  If you’re not joining us live in NYC or on the web, you can come here on Thursday February 17th at 9:15am to see a live stream of  former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Insitute.

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, litigationandstrategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups.

Plenary sessions include:

• USPTO Keynote Address by USPTO Deputy Director Sharon R. Barner
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the lower court’s reactions to the Supreme Court’s Bilski decision from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011

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

In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.” 

In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination.  According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance.  Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed. (See also IPWatchdog’s post “Patent Office Orders Reexamination of Tax Related Patent” for more on this reexamination story). Read the rest of this entry »

Bilski’s Lessons: Three Months Later

Kenneth W. Brothers, a Partner at Dickstein Shapiro LLP and a presenter at PLI’s upcoming 5th Annual Patent Law Institute, sent in this article he wrote along with Philip G. Hampton, II wherein they discuss what has happened since the Supreme Court’s Bilski decision.  Here is an excerpt and a link to the full article.

After the Supreme Court issued its decision on Bilski v. Kappos, we predicted that much ink would be spilled analyzing the fractured opinions and opaque basis for the majority decision.  While the PTO has issued interim guidelines, since June, only one district court has attempted to apply the Bilski decision and the decision has only been mentioned in two Federal Circuit decisions.

Applying Bilski. The patent bar will devote years deciphering this decision, since the majority decision failed to enunciate either a clear standard for patentability under §101 or clear guidelines for determining what is a valid business method patent.  We expect that lower court decisions likely will fall into three general categories:  (1) adherence to the Federal Circuit’s machine-or-transformation test; (2) seat-of-the-pants determinations of whether the patent-in-suit is directed to abstract; or (3) a genuine attempt to weigh multiple factors to determine patentability. Read the rest of this entry »

Inter Partes Reexamination Mechanics And Results

Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO.  This post is a comprehensive guide to practice before the PTO in inter partes reexamination.  The article covers topics such as what patents qualify for inter  partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability.  Here is an excerpt and link to the full article.

 The Creation of the Inter Partes Reexamination Procedure and Goals Thereof   

Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113.  Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure.  The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]  Read the rest of this entry »

Claim To Standard: Simplifying Patent Infringement Analysis?

The following article was written by our friends at DLA Piper, Nicholas G. Papastavros and Melissa Reinckens.

In a recent opinion impacting a broad range of industries, the Federal Circuit addressed head on the role that standards play in patent infringement analysis. In Fujitsu Ltd. v. Netgear, Inc., the Federal Circuit held that “a district court may rely on an industry standard in analyzing infringement” instead of requiring proof of infringement for each individually accused device.

As quickly as the court established new precedent, however, it softened its impact, stating that “[o]nly in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”Id. at 9. So while the decision crystallizes the role standards play in assessing infringement, the Federal Circuit stopped short of a blockbuster ruling.

Three appellants – U.S. Philips Corporation, Fujitsu Limited and LG Electronics, Inc. – asserted claims against Netgear based on individual patents. Each patent at issue claims a different feature of wireless communications technologies. Id. at 3. Appellants alleged that Netgear infringed the patents by implementing wireless networking protocols for sending and receiving messages between a base station and a mobile station. The infringement allegations implicated two standards: the Institute of Electrical and Electronics Engineers 802.11 2007 Standard (802.11) and the Wi-Fi Alliance Wireless Multi-Media Specification, Version 1.1 (WMM). Id. The appellants were part of a licensing pool purporting to include patents that any manufacturer of 802.11 and WMM compliant products must license. Id. Read the rest of this entry »