10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them
Brandon Baum, of Baum Legal and Practice Center Contributor, will be speaking about litigation issues relevant to patent prosecution at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on July 8th in San Francisco. Brandon shared with us an article he wrote for the Course Handbook entitled 10 Mistakes That Will Kill Your Patent in Litigation And How To Avoid Them. The following is an excerpt from the article:
It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1
Delaware District Court Protective Order Practice
The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.
The Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation. In my article, Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware, I explain that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee.
In Delaware, the protective order issue has been viewed differently.
Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination. (more…)
09.27.10 | posts, Reexamination | Stefanie Levine
Patent Claim Writing: Insight Into The Drafting Process
Last week, I attended PLI’s Fundamentals of Patent Prosecution 2010 Program: A Boot Camp for Claim Drafting and Amendment Writing in New York City. I was fortunate to hear an elite panel of experienced patent prosecutors talk about critical patent application topics.
Amongst the group, was Robert Faber, partner at Ostrolenk Faber LLP and one of our Practice Center Contributors. He spoke about claim drafting and gave some valuable tips as to how to write a well written claim. Faber said, ” you want to protect the invention in a claim such that you cover the concept the inventor has in mind and no matter how the particular concept is executed in years to come.” Faber advises that you should always describe the concept as broad as possible.
Below is an article Faber passed along, “Patent Claim Writing“, that helps us understand the basics of claim drafting, using a simple example:
United States Patents serve the important national goal of encouraging developments in the useful arts and sciences by granting inventors and their assignees patents that afford a limited time monopoly in their inventions in exchange for their disclosing the invention and how to practice it to the public. In the patent document, patent practitioners and patent owners= attorneys try to adequately disclose the invention and at least the best mode of practicing the invention sufficiently to enable persons skilled in the art to themselves practice the invention without undue experimentation. 35 U.S.C. ‘ 112, para. 1. That is the minimal disclosure that must be provided. (more…)
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05.25.11 | Claim Construction and Markman Hearings, Patent Litigation, Patent Prosecution, posts | Stefanie Levine