Patent Law Practice Center

En Banc Oral Argument In Two Important Patent Cases: Therasense Inequitable Conduct Standard and TiVo Contempt for Attempted Design Around

The following alert was written by our friends at Foley & Lardner.

On November 9, 2010, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, heard oral argument in two important patent cases. The first, Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al., concerns whether the current materiality-intent balancing framework for determining inequitable conduct should be modified and, if so, how. The second case, TiVo, Inc. v. EchoStar Corp., No. 09-1374, concerns the circumstances under which a district court, following a finding of infringement at trial, might then use a contempt proceeding, instead of a new trial, to determine whether a newly accused device infringes.

Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al. — Inequitable Conduct

Under the current standard, patent unenforceability based on inequitable conduct — whether a patent applicant somehow breached his duty of candor and good faith to the USPTO during prosecution — is frequently asserted by accused patent infringers as a defense to infringement. The Federal Circuit has previously expressed concerns that inequitable conduct is invoked too often. In Therasense, the court could make it more difficult to assert the defense in future cases. (more…)

Bilski’s Impact On Software Patents

This post comes courtesy of our friends at DLA Piper, J.D. Harriman (Partner in DLA Piper’s Los Angeles office) and Robert Buergi (Senior Associate in DLA Piper’s Silicon Valley office).

Bilski is a favorable decision for software patents—it broadened patentable processes beyond those that meet the machine or transformation test, and expressly recognized that even some business methods are patentable.  Overall, Bilski will allow properly drafted software method claims to enjoy patentability for years to come.

In the majority opinion, the Court discussed the country’s shift from the Industrial Age to the Information Age, the former being characterized by traditional machines and the latter being characterized by, for example, computer programs.  Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).  Determining patentability of processes using solely the machine or transformation test “would create uncertainty as to the patentability of software.” Id. (more…)

Chilling Effect of the USPTO Patent Reexamination Pilot Program?

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

Participation in USPTO pilot program held against Patentee

In August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).

Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination. (more…)

Reexamination Requests For the Weeks of October 18th and 25th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the weeks of October 18th and October 25th….

NVIDIA Attack on Rambus Patent Among Requests Filed the Week of October 18^th

In their litigation/reexamination wars, Rambus and NVIDIA often look like two boxers trying to slug each other into submission.  That was true last Wednesday.  The same day that the PTO issued its Notice of Intent to issue a reexamination certificate, confirming the claims of Rambus’ U.S. Patent No. 6,715,020, NVIDIA requested another reexamination (Inter Partes Request No. 2 below).  The ‘020 patent is just one of 17 patents that Rambus has accused NVIDIA of infringing in their case pending in the Central District of California.  Five of those Rambus patents in litigation were the subject of a recently settled ITC investigation.  The ‘020 patent is related to Rambus’ U.S. Patent No. 7,209,997, which is also part of the California litigation and the subject of two pending reexaminations.  NVIDIA is now appealing the reexamination examiner’s decision to confirm the patentability of the ‘997 claims (95/000,471). (more…)

Taking Advantage of the First Action Interview Pilot Program

This post comes from Robert Hulse (Partner at Fenwick & West and Practice Center Contributor)

The U.S. Patent and Trademark Office (USPTO) introduced its “First Action Interview Pilot Program” about two years ago. This program enables patent applicants to conduct an interview with the assigned patent examiner, by phone or in person, before the examiner issues a first office action. In the first office action, the patent examiner either allows the application or identifies grounds to reject the application based on the results of the examiner’s search of the prior art and review of the patent application.

Historically, patent applicants could conduct an interview with the patent examiner after the first office action was issued, but not before this time. With this program, the USPTO has attempted to bring the benefits of the interview earlier in the process by focusing the examiner on relevant aspects of the invention at the beginning of examination and helping the applicant understand the examiner’s interpretation of the patent claims that define the invention. (more…)