Inter Partes Reexam and the Post Grant Dead Zone

On July 24, 2012, the Patents Post Grant blog published an interesting article titled Higher Patent Reexamination Threshold Suffers from SNQ Hangover.  In the article, Scott McKeown, a partner with Oblon, Spivak in the firm’s Post Grant Patent Practice Group, wrote:


A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners) [sic]. Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.

Based on this sampling by McKeown, it seems that the new standard is indeed having an effect.  McKeown goes on to explain that if you file an inter partes reexamination request and it is denied, you can always learn from what the examiner stated and resubmit, but that only applies as long as there is time.  Inter partes reexamination will go the way of the dinosaurs on September 16, 2012.  McKeown writes: “Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions.”


The Best of the Post-Grant USPTO Proceedings Seminar

In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website. (more…)

eBay Attack on Purple Leaf Electronic Transaction Patent Among the Reexamination Requests Filed Week of Jan. 23rd

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

Last week eBay replied to an infringement action filed against it in the Eastern District of Texas by Purple Leaf by seeking reexamination of the patent-in-suit (see inter partes Request No. (2)).  The Purple Leaf patent claims a process for conducting electronic transactions and making payments over the Internet.

The winner for the most reexamination requests filed wasNanosolar that challenged three Solannex patents related to photovoltaic cells (see ex parte Request Nos. (5), (6) & (7)).  The companies are in litigation over these patents in the Northern District of California.

Ex parte Request No. (4), involving U.S. Patent No. 5,337,753 owned by Biosig Instruments and claiming a heart rate monitor, is interesting in that it expressly calls for the PTO to “clarify the record” regarding the meaning of the claims.  The Request notes the ‘753 patent has been through an earlier reexamination, but that the trial judge in a pending infringement action has refused to rely on the patentee’s assertions in that earlier reexamination because they are “ambiguous.”  (more…)

Challenge To Intel Data Evaluation Patent Among Reexamination Requests Filed Week of 10/3/11

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

Intel obtained a patent last year for a method for sifting through data on “a support vector machine” to obtain certain information.  The method appears to have diverse applications, including the identification of disease-causing genes.  A request for reexamination of Intel’s patent was filed last Monday (see ex parte Request No. (1)). Though PTO documents do not disclose the identity of the Requester, it might be Health Discovery Corporation which is now attempting to provoke an interference with the Intel patent.

IBM requested reexamination of an Acqis computer security patent (see inter partes Request No. (3)). Acqis won a judgment against IBM earlier this year for $12 million in damages and $18.5 million in costs after a jury verdict of infringement of three other patents.  On ThursdayIBM filed a declaratory judgment action against Acqis regarding the ‘814 patent. (more…)

Reexamination Requests Against MobilMedia And Round Rock Among Those Filed Week of 9/19/11

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

Last week saw a request filed by RIM against a MobileMedia patent, one of a number of mobile phone patents currently being litigated by the companies in the Eastern District of Texas (see ex parte Request No. (13)).  The MobileMedia patent, like several of those patents-in-suit, was originally assigned to Nokia.

An unnamed party filed a request against a Round Rock Researchpatent for electronic tracking (see ex parte Request No. (12)).

And CareFusion filed two requests against Vesta Medical patents for medical waste disposal systems (see ex parte Request Nos. (10) & (11)).  CareFusion set a record, we think, in August when it requested reexamination of 27 Vesta patents. (more…)