Patent Law Practice Center

Challenge to Round Rock RFID Patent, Among the Reexamination Requests Filed Week of Jan. 16th

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

In September, an unidentified party requested reexamination of four RFID patents owned by Round Rock Research.  Last Tuesday, reexamination was requested of another Round Rock RFID patent, Reissue 41,562, again by an anonymous party (see ex parte Request No. (1)).

Traditionally, reexamination has been requested of a substantial number electronics and Internet patents, but it is much less common for pharmaceutical and medical delivery patents.  In recent weeks, though, that pattern seems to be changing, with more reexamination requests directed to pharmaceutical and medical delivery patents.  That trend continued last week when reexamination was requested for two patents owned by Monosolclaiming film to be used in drug delivery systems (see ex parteRequest Nos. (3) & (4)).  Monosol has sued BioDelivery in New Jersey for infringement of the patents. (more…)

Attacks on Two MobileMedia Ideas Patents for Communication Devices, Among the Reexamination Requests Filed Week of Jan. 2nd

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

Reexamination was requested of two communications device patents owned by MobileMedia Ideas (see ex parte Request Nos. (2) & (3)).  MobileMedia, that describes itself as “patent portfolio licensor of inventions adopted by manufacturers of smart phones, mobile phones and other portable devices including personal computers, laptops, netbooks, personal media players, e-book readers, cameras and hand-held game consoles,” obtained one of the patents from Sony and the other from Nokia.  MobileMedia has sued HTC in the Eastern District of Texas for infringement of the two patents, plus nine other patents.  What stake if any Sony or Nokia has in the litigation is unknown.  It is not immediately clear who filed the requests, but it is likely HTC.

CBS Interactive requested reexamination of a paging system patent owned by Helferich Patent Licensing (see inter partesRequest No. (2)).  Helferich had sued CBS and a number of other media companies in Illinois and Arizona for infringement. CBS had requested reexamination of another Helferich patent at the end of December.  (more…)

Top 5 PLI Patent Law Posts of the Year

Every Friday, the Patent Law Practice Center likes to provide our readers with highlights from the week’s best patent law blog posts and articles. As 2011 reaches its end, and as the new year causes people to look back on the year that was, we thought it was a great opportunity to present to you the Patent Law Practice Center’s top 5 posts of the year:

1) America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Parts 1 & 2: Explanations provided by Robert A. Armitage of Eli Lilly and Company, and Janet Gongola, Patent Reform Coordinator at the USPTO, helped in breaking down the AIA for the masses.

2) A New Doctrine of Equivalents? CAFC Defines “Use” Under §271 – Written by Gene Quinn, of IPWatchdog and Practice Center Contributor, this post discusses Centillion Data Systems, LLC v. Qwest Communications International, Inc., and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a). (more…)

Top 5 Patent Law Blog Posts of the Week

Today we are debuting a weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include USPTO updates and announcements, as well as the expiration of the patent for the world’s best selling prescription drug – ever.

1. IP Watchdog: USPTO Announces More PPH Agreements, China and Iceland – Several announcements came out of the USPTO this week regarding launches for Patent Prosecution Highway (PPH) pilot programs with China’s State Intellectual Property Office, the Icelandic Patent Office, as well as the start of the Paris Route PPH program. This post details how the PPH programs facilitate work-sharing benefits worldwide.

2. Patents Post-Grant: USPTO to Implement New Ex Parte Appeal Rules for 2012 – At the beginning of the week, the USPTO released the final rule package regarding the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. This post explains the application of the new rules and how they will impact ex parte proceedings and ex parte reexamination. *PLI will be hosting a One Hour Briefing on the USPTO’s new rules on Jan. 9, 2012. Stay tuned for more information. Also check out information regarding PLI’s  Post-Grant USPTO Proceedings 2012 – The New Patent Litigation Seminar on Feb. 3, 2012.

3. Reexamination Alert: Judge Randa Refuses to Lift Reexamination Stay Despite Patentee’s Success (So Far) with Examiner – This post from Westerman, Hattori, Daniels & Adrian, LLP shares an interesting twist to the use of the 35 U.S.C. Section 316(a) standard for “complete” reexamination. In Generac Power Systems v. Kohler, the twist came when an accused infringer invoked Section 316(a) to maintain a reexamination stay rather than the more common practice of the patentee using the section.

4. TIME: Lipitor Already Cheaper After Patent Expiration – Pfizer’s patent for their best selling prescription drug, Lipitor, expired this week. According to this article, Pfizer’s sales from Lipitor averaged at about $11 billion dollars per year, which ends up being roughly one-sixth of Pfizer’s total sales. Because of the patent’s expiration, Pfizer is now doing what it can in order to preserve whatever claim it has to Lipitor, including selling the drug at a steep discount (to counter-act the sale of the generic drug at an estimated 80% discount), as well as paying pharmacies to spread the news to its customers about the discount. How Pfizer reacts to losing the patent for the best selling prescription drug of all time will have an impact on how the rest of the pharmaceutical market handles patent expiration.

5. Patently-O: Holiday Gift List for Patent Attorneys and the Like – Although this blog post is from last week, I thought it would be good to share right before the weekend, considering the holiday season is upon us and all types of holiday parties (whether they be office or social) are popping up each week. Patent attorneys deserve cool presents too, and this list is full of great and very different gift ideas. Enjoy!

HTC Claims Intervening Rights Against Apple In ITC Case

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing the pending ITC investigation of HTC’s mobile communication devices.  Daniels raises interesting questions regarding HTC’s latest motion asking the ITC  for a determination that it does not infringe one of Apple’s patents because it’s entitled to “absolute intervening rights” against Apple.

HTC might be making a comeback in the ITC’s investigation of mobile communication devices  (337-TA-710).  In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple.  That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.

But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC.  And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent. (more…)