Patent Law Practice Center

PLI’s Patent Law Institute is Next Week!

PLI’s 5th Annual Patent Law Institute is next week on February 17-18 and the Patent Law Practice Center is your one-stop-shop for all things Institute related.  If you’re not joining us live in NYC or on the web, come here next Thursday at 9:15am to see a live stream of former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Institute.  Also be sure to check back in to the Practice Center to read my live blog from the Institute.

The Institute will cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and strategic & transactional lawyers. The two-day schedule includes six one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigation and strategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups. In just two days, you will learn the important developments and best practices in each area. And earn Ethics credit, too! You can design the Institute schedule that best meets your individual practice needs. Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outside lawyers.

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…)

DNA Patents Dominate Reexamination Requests Filed Week Of January 24, 2011

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

In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing.  Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).

Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).

The following inter partes requests were filed:

(1)         95/001,528 (electronically filed) – U.S. Patent No. 7,69,133 entitled SYSTEM AND METHOD FOR DEVELOPING RULES UTILIZING IN A KNOWLEDGE MANAGEMENT SYSTEM and owned by Wellogix Technology Licensing.  Filed January 26, 2011. (more…)

RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Late last year MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data.  RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.

Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents.  (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent.  Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).

The following inter partes requests were filed:

(1)       95/001,525 (electronically filed) – U.S. Patent No. 7,777,783 entitled MULTI-VIDEO NAVIGATION and owned by Proximex.  Filed January 21, 2011, by VidSys, Inc.   The ‘783 patent is currently the subject of a litigation styled VidSys v. Proximex (Case No. 1:10-cv-1185 (E.D. Va.)).

(more…)

USPTO Warns Practitioners On Abusive Filings In Patent Reexamination

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

On January 10, 2011, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory. (more…)