Patent Law Practice Center

How Long Will Inter Partes Review Really Take?

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Practical Pendency of IPR to be 18-24 Months

In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.

IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.

Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX. (more…)

Patentee’s Arguments in Reexamination Create Intervening Rights Erasing $29.4 Million Verdict

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing Tuesday’s CAFC decision in the Marine Polymer Techs. v. HemCon case. In a decision that seems to encourage reexamination, the Court held that “intervening rights” apply to unamended claims based on statements made during reexamination.  Daniels discusses the history of the case and highlights the key points of the CAFC decision.

The CAFC panel decision [Tuesday] in Marine Polymer Techs. v. HemCon will do more to popularize reexamination than all the proselytizing by all the reexamination lawyers and bloggers ever could.  The Court held that an argument made by the patentee traversing a rejection in reexamination constituted a disclaimer of patented subject matter; this disclaimer triggered absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate.  The Court also suggested that the accused infringer might also be protected by equitable intervening rights for the period after issuance of the reexamination certificate and sent the case back to the trial court for further fact-finding. (more…)

AMP v. USPTO: The Latest Developments

Ryan Chirnomas, Partner in the Biotechnology group at Westerman, Hattori, Daniels and Adrian, sent in this article discussing the latest developments in the AMP v. USPTO case and what the Plaintiffs next move may be.

After the CAFC issued a decision in AMP v. USPTO on July 29, 2011, there was much speculation as to what would be the next move in this compelling case.  A petition for an en banc rehearing or a petition to the Supreme Court to grant a writ of certiorari seemed likely, but instead each party petitioned for a rehearing by the same three-judge panel.  Last week, the CAFC denied both of these without providing any further comments.  However, these petitions provide some insights as to how the parties’ positions on standing as well as the merits are evolving, and are summarized below.

Plaintiffs’ Petition for Panel Rehearing

On August 25, 2011, the Plaintiffs, represented by the ACLU and PubPat, filed a petition for a panel rehearing on both substantive issues and issues of standing.  As to the substantive issues, the Plaintiffs took issue with the majority’s reasoning that isolated DNA does not occur in nature. (more…)

Jump the Shark Patent Style: Supremes Take Kappos v. Hyatt

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why he believes the United States Supreme Court’s decision to accept cert. in Kappos v. Hyatt was undeniably a bad decision.

By accepting cert. in Kappos v. Hyatt the United States Supreme Court has clearly and undeniably jumped the shark in terms of patents.  This case, which raises issues of such little importance to the greater scheme of patent law, is hardly appropriate for Supreme Court consideration.  The Supreme Court is wasting its time hearing this case and denying the slot to a far more important matter, which is nearly unconscionable.

Each year the United States Supreme Court receives upwards of 7,000 petitions for a writ of certiorari, which is the petition one must file in order to ask the Court to take the case.  The United States Supreme Court typically hears about 100 cases (plus or minus).  One would suspect that the cases heard by the Supreme Court for full consideration and a written opinion would be of the utmost importance to the Republic.  Those cases where there is either a fundamental matter of law, an issue that impacts a great many people or a case of tremendous importance for the administration of justice.  Simply stated, Kappos v. Hyatt does not qualify on any level for Supreme Court consideration.  Taking this case is an extreme and utter waste of precious judicial resources.

Click here to read IPWatchdog’s full publication.

 

Stanford v. Roche and Ownership of Federally Funded Research: Navigating the Vagaries of Contract Law

Mary Hess Eliason, an Associate with Birch Stewart Kolasch and Birch, sent in this article discussing the recent Supreme Court decision of Stanford v. Roche .  The article highlights key points in both Chief Justice Roberts’ majority opinion and Justice Breyer’s dissent and questions whether this case presented the appropriate fact situation to address the issues at hand.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law.[1] The Supreme Court Opinion of Stanford v. Roche reinforces this maxim in the context of federally funded research.  The issue brought before the Supreme Court was, in the context of federally funded research, whether the ownership of the invention automatically 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 any right of the federal contractor by assigning the invention to a third party.[2]

In their recent majority opinion, the Supreme Court decided that, based on contract law, an Inventor could assign an invention to a third party, even if the invention was federally funded under Bayh-Dole. (more…)