Patent Law Practice Center

TiVo Attack On Four Verizon Patents Among Reexamination Requests Filed Week Of 5/30/11

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

On Thursday, TiVo requested reexamination of three Verizon cable box patents, and on Friday, of a fourth Verizon patent (see ex parteRequest Nos. (9) through (12)).  These requests are only the latest development in an on-going patent war between the two companies that includes fronts at the ITC and in two District Courts.

Reexamination was requested for SynQor’s U.S. Patent No. 7,272,021 for power converters (see inter partes Request No. (1)).  In January, Judge Ward enjoined Artesyn/Astec and a series of other companies from infringing four SynQor patents, among them the ‘021 patent.  It is not yet clear from the PTO records who filed the request.

And Abbott Diabetes Care requested reexamination of three DexComanalyte-sensor devices in the long-term patent dispute between the companies (see ex parte Request Nos. (4), (5) & (6)). (more…)

Medtronic’s Attacks On Edwards Lifescience’s Heart Valve Patents Among Reexamination Requests Filed Week of 5/2/11

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

Medtronic has requested reexamination of two Edwards Lifesciences’ patents claiming heart valve systems for implantation, U.S. Patent Nos. 6,582,462 & 7,789,909 (see inter partes Request Nos. (3) & (4).  The two companies are long-time rivals in that market and are currently in litigation in Delaware regarding the ‘462 and ‘909 patents.

There were also requests for reexamination of patents involved in infringement disputes that we have been tracking.  One is U.S. Patent No. 7,349,012 which is one of the many patents in the litigation between MobileMedia Ideas and RIM (see inter partes Request No. (2)).  The other is U.S. Patent No. 7,917,186 owned by DexCom which is in litigation against Abbott Diabetes Care (see ex parte Request No. (6)). (more…)

You filed suit on a patent with a pending SNQ? Really?

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Orinda Intellectual Properties filed suit on April 25, 2011 against a long list (50!) of electronics companies alleging infringement of US 5,438,560 purporting to cover recording and reproducing optical information on Blu-ray discs. Fine, lots of patents in the Blu-ray arena.

But a quick look at public PAIR shows that the USPTO found a substantial new question of patentability on March 7, 2011 and ordered a re-exam of all 3 claims of the ’560 patent.

 

 

 

 

Call me old-fashioned, but shouldn’t you get that substantial question of patentability straightened out before suing fifty companies for patent infringement?  Maybe there is some strategy I am not aware of (willfulness?), but I can imagine a judge being pretty upset with the plaintiff if the patent goes down in flames at the USPTO.

 

USPTO Proposes Overhaul To Patent Reexamination Proceedings

On Monday, April 25, 2011, the USPTO published a proposal in the Federal Register enumerating proposed changes being considered by the agency to streamline the proceedings governing ex parte and inter partes reexamination proceedings.  Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here). (more…)

USPTO Warns Practitioners On Abusive Filings In Patent Reexamination

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

On January 10, 2011, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory. (more…)