ass=”alignleft size-full wp-image-1458″ title=”update” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/update.jpg” alt=”update” width=”132″ height=”127″ />Last week we noted the potential affect of Ex Parte Tanaka internal to the USPTO. Tanaka was decided last December by the Board of Patent Appeals and Interferences (BPAI), holding that a reissue application was improper where the only defect identified in an issued patent was the
Upcoming Post Grant CLE Opportunities
ass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”229″ height=”132″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th). The editors
The New Texas Two-Step
–E.D. of Texas Defendants Seek to Ride Off Into the Sunset–
The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation
NTP Reexaminations Move on to The Federal Circuit
ass=”alignleft size-thumbnail wp-image-1402″ title=”denied” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/denied-150×150.jpg” alt=”denied” width=”85″ height=”88″ />As first reported by PatentsPostGrant.com in November 2009, the patent reexaminations of NTP vs. RIM infamy were soundly shot down by the BPAI.[1] In November of 2009, the BPAI began issuing a series of decisions affirming the rejections of the five NTP patents.
5,436,960 BPAI
Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?
ass=”alignleft size-full wp-image-1179″ title=”sling” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/sling.jpg” alt=”sling” width=”217″ height=”249″ />As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis. For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims. However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic.
In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed.
For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.
Continue Reading Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?
PEELING BACK THE LAYERS OF TANAKA: PATENT OWNER INITIATED REEXAMINATION AS AN ALTERNATIVE TO REISSUE
been unavailable since the possible ground for invalidity was a public use of the claimed invention.
Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part IV of IV)
Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial. In our prior posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I, II and III)”, we discussed using pending reexamination proceedings to support invalidity contentions, prove inequitable conduct, and rebut allegations of willful infringement. Accused infringers have also attempted to use evidence of parallel reexamination proceedings to support and oppose motions for preliminary injunction.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part IV of IV)
Effectively Presenting a Request for Patent Reexamination(Part II of II)
g class=”alignleft size-full wp-image-1265″ title=”bigq copy” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/bigq-copy.bmp” alt=”bigq copy” width=”218″ height=”176″ />What Exactly is a Substantial New Question of Patentability Anyway?
As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent. Certainly there are numerous grounds to challenge a patent in a Federal District Court. However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO. The appropriate subset is explicitly identified by the reexamination statutes. Simply stated, proper SNQs must be based on patents and/or printed publications only. So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.
For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640
In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests. Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office?
Continue Reading Effectively Presenting a Request for Patent Reexamination(Part II of II)
Seeking a Stay of Patent Litigation: A Factors-Based Analysis
Guest Posting by Scott McBride of McAndrews Held & Malloy [1]
Conference Center February 11-12, 2010. The views expressed herein are not necessarily the views endorsed or supported by McAndrews, Held & Malloy, Ltd. nor any of its clients.
Patent Reform Percolating?
ass=”alignleft size-full wp-image-1166″ title=”1208885597_4795″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/1208885597_4795.jpg” alt=”1208885597_4795″ width=”274″ height=”173″ />With the Obama administration seemingly reigning in their health care reform ambitions, it may be that the never ending saga of Patent Reform may once again be percolating in Washington D.C. President Obama’s recent comments on the value of a strong patent system and outdated USPTO practices, and increased USPTO budget seem to evidence a refocused agenda. On the heels of the President’s comments, last Tuesday, a group of bipartisan House members issued a letter to the House leadership opposing the reform efforts, labeling the earlier bill passed by the 110th Congress as “misguided.”
The letter from representatives Don Manzullo (R-IL)
Continue Reading Patent Reform Percolating?