Patent Law Practice Center

PLI’s Patent Law Institute Coming To A Location Near You!

PLI’s 5th Annual Patent Law Institute is on February 17-18 in New York (and via web) and on March 21-22 in San Francisco.  If you’re not joining us live in NYC or on the web, you can come here on Thursday February 17th at 9:15am to see a live stream of  former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Insitute.

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, litigationandstrategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups.

Plenary sessions include:

• USPTO Keynote Address by USPTO Deputy Director Sharon R. Barner
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the lower court’s reactions to the Supreme Court’s Bilski decision from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

Inter Partes Reexamination Mechanics And Results

Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO.  This post is a comprehensive guide to practice before the PTO in inter partes reexamination.  The article covers topics such as what patents qualify for inter  partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability.  Here is an excerpt and link to the full article.

 The Creation of the Inter Partes Reexamination Procedure and Goals Thereof   

Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113.  Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure.  The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]  (more…)

Reexamination Strategies Concurrent with Litigation

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

I.  The Multi-Purpose Litigation Tool

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as vehicle to stay a district court litigation. Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional prosecution history for claim construction, avoid injunctive relief, demonstrate the materiality of a reference subject to an inequitable conduct defense, or establish objectively reasonable behavior for use in preventing a post-complaint willfulness finding. (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…)

Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. (more…)