Patent Law Practice Center

Patent Law Institute Live Blog: Dialogue Between the Bench and Bar

Welcome to the Patent Law Institute‘s last panel of the day. The panel is entitled, “Dialogue Between the Bench and Bar”, and has a great lineup including the Chief Judge of the Federal Circuit and leading members of the patent appellate bar who discuss hot patent topics affecting patent practice. The panel includes Donald R. Dunner, Hon. Randall R. Rader, Seth P. Waxman, Dean John M. Whealan, and Hon. William G. Young. Here are the highlights:

On the U.S. Court of Appeals for the Federal Circuit:

Hon. Rader, Chief Judge, United States Court of Appeals for the Federal Circuit:

The term “specialized” court was an attack on the court in the creation era, but Congress specifically negated that by providing the court a broad jurisdiction. The culture of commercial litigation requires judges to seek the kind of resolution that allows the American CEO to quickly respond to market pressures. There’s a requirementof bright line rules in this culture of the court, but this does not facilitate the market. Thus, the Court of Appeals has a great strength in not being bound to bright line rules like other courts. (more…)

USPTO’s Patents for Humanity

We’re finally using our patent powers for good. The USPTO and the White House announced an awards competition titled,  “Patents for Humanity”. It is the USPTO’s voluntary pilot program to recognize patent owners who apply their patented technology to address humanitarian needs. According to the USPTO, “The program advances the president’s global development agenda by rewarding companies who bring life-saving technologies to underserved people of the world, while showing how patents are an integral part of tackling the world’s challenges.”  Patent owners and inventors whose patents offer a humanitarian goal will receive an award certificate that can be used to accelerate the prosecution any patent application in their portfolio (a $4,800 value). (more…)

Challenges to Medical Device Patents Prominent Among Reexamination Requests Filed Week of February 6, 2012

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

There has been a notable increase in the number of reexamination requests filed against medical device patents.  That trend continued apace last week.

First, Innova Labs requested reexamination of two Inogen patents claiming structures for delivering therapeutic gases to patients (see inter partes Request Nos. (3) & (4)).  Inogen has sued Innova in the Central District of California for infringement of the patents.  Also, Globus Medical requested reexamination of three surgical access apparatus patents owned by Nuvasive (see inter partes Request Nos. (6), (7) & (8)).  Those companies are locked in an infringement action in Delaware.

And reexamination was requested for yet another Round Rock Research RFID patent and yet another Ronald Katz telephone patent (see ex parte Request Nos. (3) & (5)). (more…)

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 Mass Aggregators: The Giants Among Us – Written by guest authors Tom Ewing and Professor Robin Feldman, this post discusses how a handful of entities have amassed vast treasuries of patents on an unprecedented scale. The post points out how it is important to understand the method of organization and the types of activities that are causing a paradigm shift in the world of patents and innovation.

2) Patently-O: New Post Grant Options and Associated Proposed Fees – This post lists the new fees for petition for post-grant opposition or covered business method patent review, a petition for inter partes review, a petition for ex parte reexamination, supplemental examination, derivation, and third party submission of prior art in pending cases. (more…)