Patent Law Practice Center

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…)

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…)

House Version Of Inter Partes Review & Wasted Time

Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant, sent in this article discussing to what extent inter partes reexamination will change if H.R. 1249, the House’s proposed patent reform legislation, is passed into law.

Inter Partes Review, 5 Months to a First Action?

Should the proposed patent reform legislation pass into law, inter partes reexamination will gradually cease to exist. In place of inter partes patent reexamination will be an entirely new mechanism known as Inter Partes Review.

Inter Partes Review will not be conducted by patent examiners of the Central Reexamination Unit, but instead by the Administrative Patent Judges of the Patent Trial & Appeal Board (now known as the BPAI). As the new proceeding is conducted by APJs, limited discovery practices will be provided. Beside these procedural changes, the substantive analysis remains largely the same. …at least in H.R. 1249. (more…)

Cost Benefits Of Concurrent Patent Reexamination

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

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action. (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…)