Patent Law Practice Center

Is Post-Grant Patent Review Coming to the Retail Industry?

R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently launched the Retail Patent Litigation blog.  In describing the blog, Donoghue writes, “Though patent litigation is relatively new to many retailers, it is a significant and growing concern for all retailers, as well as the members of the retail supply chain.  Retail Patent Litigation is a guide to help retailers understand patent litigation and how to effectively and creatively drive their individual cases to positive resolution.”  In this article, he discusses how patent reform may impact the retail industry.

As patent reform looks increasingly likely, the retail industry is beginning to look at how patent reform will impact the retail supply chain. Earlier this week, the National Retail Foundation (“NRF”)wrote to Congress supporting Section 18 of H.R. 1249 which creates a post-grant, adversary proceeding for challenging the validity of patents at the Patent Office. The NRF advocates for Section 18 as a cost-effective alternative to costly patent litigation. While post-grant review (like inter partes reexams) would likely be cheaper than district court patent litigation, Section 18 has significant draw backs. (more…)

Patent Reform Update: Senate Eyes September Enactment For Patent Reform

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the status of the pending patent reform legislation.

Debt Ceiling Raised, Job Bills On Deck

With debt ceiling armageddon now averted in the 11th hour (depending upon your perspective), Congress has turned its attention to election season addressing the economy. As previously discussed, the patent reform legislation has long been touted as a “no cost economic stimulus” that will create jobs.

While there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate has indicated a willingness to accept the House bill.

Today, Senate Majority Leader Harry Reid (D-Nev.) has identified patent reform as the first jobs bill to be taken up in the Fall term. To ensure quick enactment Senator Reid has indicated he will file cloture today (to remove the “hold”) so that the Senate can take up the bill immediately when the Senate convenes in September. (more…)

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.

The Impact of Therasense On Patent Reform

PATENT REFORM, CLOSE ENOUGH FOR GOVERNMENT WORK?