New FTC Report Suggests Improved Alignment of Patent System With Competition Policy

Earlier this week, the FTC published an extensive report recommending ways to improve patent law policies.  The report emphasizes that the patent system and competition policy share the goal of promoting innovation that benefits consumers and explores ways to achieve greater alignment between the two.  Our friends at Foley & Lardner sent in this alert highlighting the key points of the report.

On March 7, 2011, the FTC released a 300-page report, The Evolving IP Marketplace: Aligning Patent Notice And Remedies With Competition. The Report assesses the patent system’s benefits and challenges as more companies shift to “open innovation” and increasingly rely on technology transfers to adopt inventions created outside their own R&D efforts. The FTC continues its engagement regarding the patent system that began with its 2003 Report, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, and continued with its 2007 Report, Antitrust Enforcement and Intellectual Property Rights: Promoting Innovation and Competition. The 2011 Report aims to better align the patent laws with competition policy by recommending improvements to two areas of patent law policies, namely how well a patent gives notice to the public of what technology is protected, and the remedies available for patent infringement.

Improving The (more…)

Deciding Whether To Stay A Case Pending Reexamination

Scott Daniels, Partner at Westerman, Hattori, Daniel & Adrian and Practice Center Contributor, sent in this article discussing the standard applied by trial judges when determining whether to stay a patent infringement case pending reexamination.  According to the article, rather than applying the “universally accepted standard” of clear and objective, the standard is commonly applied in an extremely subjective manner. Daniels examines whether the problem is with the trial judges or with the standard itself.

The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective.  A court is to apply its discretion in light of the following factors:

(1)   whether discovery is complete and a trial date is set, i.e., is the case in its early stages;

(2)   whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and

(3)   whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused  infringer for some tactical reason.

Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion. (more…)

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. (more…)

Reexamination Strategies Concurrent with Litigation

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

I.  The Multi-Purpose Litigation Tool

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as vehicle to stay a district court litigation. Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional prosecution history for claim construction, avoid injunctive relief, demonstrate the materiality of a reference subject to an inequitable conduct defense, or establish objectively reasonable behavior for use in preventing a post-complaint willfulness finding. (more…)

Accused Infringer Uses Reexamination To Defeat Willfulness Allegation

Scott Daniels, partner at Westerman, Hattori, Daniels & Adrian LLP and Practice Center Contributor, sent along his analysis on the recent District Court decision, Plumley v. Mockett.  In a decision that may surprise many,  the District Court held that the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  According to Daniels, “the first goal of a third party requesting reexamination is to
 invalidate the patent claims.  But even if the Patent Office confirms 
the validity of the claims, the reexamination may significantly benefit
 the requester on other issues, such as claim construction,  infringement, 
and inequitable conduct.”

Below is Scott Daniels’ analysis…

A party accused of patent infringement requests reexamination at the PTO to attack the patent as being anticipated or obvious in view of a prior art patent or printed publication.  An accused infringer, however, may also achieve other less obvious goals by seeking reexamination, such as creating an estoppel, creating a disclaimer limiting claim scope, or establishing the materiality of a prior art reference for an inequitable conduct defense.  Or, as in Plumley v. Mockett, the accused infringer may use reexamination to obtain summary judgment of no willful infringement.  2010 U.S. Dist. LEXIS 57254 (C.D. Cal. May 26, 2010). (more…)