Patent Law Practice Center

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. Read the rest of this entry »

New BPAI Appeal Rules Proposed

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

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. Read the rest of this entry »

Samsung Attack On Two Mobile Phone Antenna Patents Owned By Fractus Among The Reexamination Requests Filed The Week Of November 8th

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

Last year Fractus S.A of Spain sued Samsung and a host of other mobile telephone makers in the Eastern District of Texas for infringing nine patents related to internal antennas for mobile telephones.  Samsung has now filed reexamination requests against two of those Fractus patents (Inter partes Request Nos. (1) & (2) below).  Requests for reexamination have now been filed against all nine Fractus patents-in-suit.

Also of special interest are reexamination requests filed by TiVo against two EchoStar patents for TV programming (Ex parte Request Nos. (3) & (5) below).

The following inter partes requests were filed: Read the rest of this entry »

Cursory analysis of “abstract” by Bilski Court followed in Ultramercial case

The following guest post comes from Stuart Meyer,  a Partner with Fenwick & West.

Not saying, “We told you so, but…”

A decision from the Central District of California in August in the Ultramercial v Hulu case showcases a concern that we expressed about how cursory reliance on a claim being unpatentable because it is “abstract” can lead to unfortunate results. An amicus brief we filed in the Bilski case warned of the problems that could result if the Court applied the term “abstract” without providing a clear indication of the sense in which that term was being used. See amicus brief of On Time Systems.

A claim that is just a vague expression of a concept may be considered “abstract” and therefore correctly be held unpatentable. On the other hand, there are many claims that clearly are eligible for patent protection even though they deal with abstractions. For instance, any use of a sensor deals with something that is abstract – the example we gave in the brief was that a signal produced by a wind sensor is an abstraction of the force of air molecules striking the sensor. Just because a claim is based on a signal from a wind sensor does not mean that it is abstract and therefore unpatentable. Read the rest of this entry »

Exclusive Interview With Senator Birch Bayh

The following was sent in by Gene Quinn, of IPWatchdog and Practice Center Contributor.

On October 12, 2010, I had the honor of interviewing retired United States Senator Birch Bayh at his office at Venable LLP.  Senator Bayh was the primary architect of the landmark Bayh-Dole Act, which gave Universities the ability to own the patent rights to the inventions made.  The 30th Anniversary of passage in Congress is rapidly approaching, which provided the backdrop for our discussion.

Those familiar with Bayh-Dole and government funded research in generaly know that the United States has for years funded research at Universities.  Prior to the enactment of Bayh-Dole, however,  it was virtually impossible for private enterprises to license the rights to patents obtained through federally funded research. Thus, society was funding the research and the innovations were simply being withheld from the public due to the existence of too much red tape. Bayh-Dole changed everything, and has been described as the “the most inspired piece of legislation to be enacted in America” since the end of World War II. Read the rest of this entry »