Patent Law Practice Center

Novozymes Attack on Patent for Ethanol-Producing Enzyme Composition, Among the Reexamination Requests Filed Week of February 20, 2012

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

Novozymes A/S, considered the world’s largest maker of industrial enzymes, requested reexamination of the recently-issued U.S. Patent No. 8,048,657 claiming an enzyme composition for making ethanol (see ex parte Request No. (8)).  Danisco, a DuPont subsidiary, owns the patent and is considered the world’s second largest maker of industrial enzymes.  Although there does not appear to be pending infringement action regarding Danisco’s ‘657 patent, one might soon be filed.  Novozymes has successfully suedDanisco for patent infringement, obtaining an $18.3 verdict in the Western District of Wisconsin at the end of October.

The refrigerator war between LG Electronics and Whirlpool opened a new front last week, with LG requesting reexamination of aWhirlpool ice-delivery patent (see ex parte Request No. (2)), andWhirlpool requesting reexamination of an LG icemaker patent (see inter partes Request No. 2)).  The companies have been battling in recent years in several District Court infringement actions and in an ITC investigation. (more…)

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…)

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Reexamination Practice and Evolution – USPTO Perspective

Welcome back to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Reexamination Practice and Evolution – USPTO Perspective. Our featured panelist is Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office. Below are some the highlights:

Revision of Standard for Granting an Inter Partes Reexamination Request: the final rule implements the part of Section 6 of the AIA directed to inter partes reexamination. Inter partes reexamination will be replaced by inter partes review. The reasonable likelihood standard is different from the substantial new question standard. It doesn’t require that the requester establish a prima facie case, and the reasonable likelihood standard doesn’t apply to ex parte reexaminations either.

Miscellaneous Post Patent Provisions Rule Package: The comment period closes March 5, 2012. The office has an obligation to make sure the reexamination isn’t being filed by someone who shouldn’t be filing it. This notice of propose rulemaking implements the estoppel provisions of sections 6(a) and 6(d), which bar a 3rd party requester from filing or maintaining an ex parte reexamination after a final decision has issued in a post grant or inter partes review on the same patent that was requested by the same 3rd party.

Supplemental Examination and Revisions of Reexamination Fees: Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent. There is no 3rd party participation permitted at all. Supplemental exam has 2 parts – the supplemental exam itself and the supplemental reexamination portion. “Information” that forms the basis of the request is not limited to patents and printed publications. Within 3 months from the filing date of the request, the Office must decide whether any of the items of information filed with the request raises a substantial new question of patentability.

We’ll be back after the break with more from the Post-Grant USPTO Proceedings Seminar!

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. Highlights include a lot of news and updates from the USPTO! 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) Intellogist: A Quick Guide to Changes on the USPTO Homepage – The USPTO homepage’s familiarity to any patent or trademark researcher facilitates the ease of their site navigation. However, this post explains how the current USPTO homepage will be officially retired on February 29, 2012 (yep, it’s a leap year folks), and it also shares the differences between the new homepage and the old one.

 2) PatentDocs: USPTO Proposes Rules Changes for Implementing AIA Provisions — Statute of Limitations Provisions for Office Disciplinary Proceedings – This post addresses address the USPTO’s notice regarding “Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings”. (more…)

New Inter Partes Review Grounds To Stay Most Patent Litigation?

Written by Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor.

Estoppel Provisions Disfavor Parallel Proceedings

During a  [recent] webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that ofInter Partes Review. The Inter PartesReview (IPR) estoppel provisions are similar in some respects to the currentinter partes patent reexamination (IPX) provisions, but differ in significant respects.

In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, whileIPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.

Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. (more…)