Patent Law Practice Center

Reissue & Reexam Live Blog: Petition Practice in Patent Reexam From USPTO Perspective

Next speaker is Mr. Kenneth Schor of the USPTO’s Office of Patent Legal Administration (OPLA).  He is discussing petition practice in patent reexamination from a USPTO perspective. He says that a petition should include:a statement of the type of relief requested and the authorizing provision of the rules, statute, etc.; a statement of the facts; an identification of the points that are to be reviewed; and the fee, where required, to avoid summary dismissal (it’s recommended that a petition include a general authorization to charge deposit account, in case relief can be granted only based on a regulation requiring a higher fee than submitted). (more…)

Live Blog: PLI’s Reissue & Reexamination Strategies & Tactics With Concurrent Litigation

PLI’s Reissue and Reexamination Strategies and Tactics with Concurrent Litigation kicked off this morning.  First up is Todd Baker of Oblon Spivak.  In his Reissue overview, Baker explains that common bases for filing a reissue application include: the original patent claims are too narrow or too broad, the disclosure contains inaccuracies, the applicant failed to assert or incorrectly asserted foreign priority, and/or the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications.  In his overview of Ex Parte Reexam, Baker explains ex parte reexams can be initiated by patent owner, third parties (may remain anonymous); or Director. He says requests must be based on prior art patents and printed publications; requests cannot be based on public use, sale priority of invention or derivation; and claims many not be broadened in any request.  He explains that reexamination of patent claims will result in targeted claims being cancelled; narrowed; or confirmed.  Baker went on to discuss pitfalls to avoid both in Reissue and Ex Parte Reexam.

Pitfalls to avoid in Reissue (oath):

1. The error must be specific.  Insufficient for oath to merely state: “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
2. Insufficient to merely reproduce the amended claims and assert that the error is evident from the amendment
3. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
4. Preparing oath not a ministerial act
5. Adding a dependent claim to hedge against possible invalidity of original claims does not constitute an error correctible by reissue. Ex parte Tanaka
6. If the basis of the error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy s 251. (more…)

Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information

The following article was sent in by Lisa A. Dolak , an Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor.

A recent legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.”  It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges.  Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with undisclosed or misrepresented information, it raises a number of questions, including questions relating to potential disciplinary consequences for practitioners. (more…)

Verizon Attack On EMSAT Cell Phone System Patent Among Reexamination Requests Filed Week Of December 13, 2010

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

The most interesting reexamination request last week was filed by Verizon Wireless against EMSAT’s U.S. Patent No. 7,289,763 for a cellular telephone system (see Inter partes Request No. (6)).  EMSAT had sued nine companies for infringement of the ‘763 patent, including Verizon.

But perhaps most noteworthy was the fact that Apple did not file any requests.

The following inter partes requests were filed: (more…)

Issuance Of Continuation Patents During Litigation Undermine Defense To Willful Infringement

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

Texas Court Likens Issuance of Continuation Patents During Litigation to Patent Reexamination

[W]illful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). In assessing the propriety of a post-filing willfulness allegation (i.e., after the  complaint is filed with the court) Seagate is oft cited for the proposition that a plaintiff must seek injunctive relief (i.e., preliminary injunction). However, court’s have refused to impose such a wooden rule. Instead, court’s look to the totality of the circumstances, including factors such as the existence of concluded patent reexaminations. (more…)