Patent Law Practice Center

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Federal Circuit on Software Patents: Show Me the Algorithms – This post discusses the decision by the United States Court of Appeals for the Federal Circuit in Noah Systems, Inc. v. Intuit, Inc. and how the CAFC explained  the disclosure requirements for software patents that utilize means-plus-function claim language.

2) Patents Post-Grant: Different Thresholds for New Post Grant Proceedings – This post questions whether or not there is a significant enough difference between Inter Partes Review and Post Grant Review to make an impact between grant rates. But the post does discuss the differentiating thresholds necessary for initiating the process of Inter Partes Review and Post Grant Review.

3) Patently-O: The Impact of Mayo v. Prometheus: Three Weeks In – The decisions that have been released that rely on the Supreme Court opinion in Mayo v. Prometheus are highlighted and summarized in this post.

4) Patents4life: Aventis v. Hospira – How to Meet the Therasense Standards – This post discusses the Federal Circuit’s decision in Aventis v. Hospira, and how the inventors were found to have intentionally decided not to submit two material pieces of prior art to the PTO.

5) IP Kat: Patents and jurisdiction 2: Innovia v Frito-Lay – This post analyzes the question of which court Europeans can bring their patent related claims. The reason for this is, “because the same patents get litigated in jurisdictions outside the European Union too, and the effort of fighting to sue before the court of one’s choice often determines the outcome of the substantive proceedings too.”

AIA Calls for Discovery, but PTO Doesn’t Really Know What that Entails

A recent law suit against the USPTO has brought to light an issue regarding the litigation process following the patent reform of the America Invents Act. The issue is that the USPTO has never provided for discovery in its review proceedings policies before, but within the AIA’s provisions for inter partes review and post-grant review there is a call for a discovery process.

The National Law Journal reports Cordis Corp., a Johnson & Johnson subsidiary, sued the U.S. Patent and Trademark Office and its director, David Kappos, based on the USPTO’s refusal to let Cordis subpoena companies challenging its patents in an inter partes re-examination. The USPTO stated its policy is not to allow discovery in these review proceedings.  The ultimate issue emerging from this suit goes beyond whether Cordis is entitled to subpoena certain parties.  Because the AIA reforms the law such that discovery must now be a part of the inter partes review process and the post-grant review process, the issue becomes bigger as it becomes clear that there has yet to be a standard for discovery within PTO proceedings and the number of litigation matters is due to increase.

With no precedent to follow, discovery guidelines have to be established either through years of law suits and proceedings until precedent becomes settled and proposed rules are enacted. Those of you that wish to express your concerns and comments regarding the discovery issue still have time to have your thoughts heard by the USPTO. According to the Federal Register, 37 CFR Part 42 [Docket No.: PTO–P–2011–0094], Practice Guide for Proposed Trial Rules, written comments must be received on or before April 9, 2012 to ensure consideration.

For more on the Cordis suit against the USPTO and Kappos, check out the National Law Journal article here.

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Patent Drawings: An Economical Way to Expand Disclosure – This post discusses the importance of including patent drawings within patent applications that  show every feature of the invention specified in the claims, and explains when and where the applications would best serve the applicant.

2) Chicago IP Litigation Blog: Determining Senior User is Not an Issue for Motion to Dismiss – This post reports on Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011), including both parties’ arguments as well as the judge’s decision. (more…)

The New Law the USPTO is Thankful for this Thanksgiving

In the spirit of expressing gratitude this Thanksgiving holiday, Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, shares the newest law for which the USPTO is thankful. On November 18, 2011, President Obama signed into law H.R. 2112, the Consolidated and Further Continuing Appropriations Act. This bill provides the USPTO with official spending authority through the end of September 2012 (the end of the fiscal year) and the ability to spend up to $2.7 billion dollars. According to Scott’s post,  (more…)

Tech Giants Weigh In On USPTO Post Grant Rule Making Effort

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter Partes Review & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter Partes Review (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners. (more…)