Last Friday’s disappointing June Jobs Report has ratcheted up the already significant pressure on the Obama Administration to address the struggling economic recovery. Meanwhile, the Senate has worked through the traditional July break in an effort to reach a compromise on the looming debt
Back in October of last year I explained the recently concluded patent reexamination of Card Activation’s U.S. Patent 6,032,859. In the previous post, I discussed that placing confirmed/allowed dependent claims in independent form was unnecessary in patent reexamination.(MPEP 2260.01) While this procedural nuance would seem fairly trivial, the manner of making amendments can have significant impact outside the USPTO.
In the case of the Card Activation reexamination, claims 20 and 29 (independent) were amended to include the features of confirmed claims 21 and 32. That is to say, claims 21 and 32 could have simply been retained in their current form, without the need to amend the base claim. At the time, I explained that Card Activation may have unnecessarily narrowed other dependent claims, which could result in an intervening rights defense.
Last week, the Delaware District Court considered the manner of this amendment in an altogether different context. The Court found the amended claim lacking written description support on summary judgement, and in the process, shed some light on the seemingly short sighted choice in amendment style.
Continue Reading Manner of Making Amendments in Patent Reexamination
As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of
In 2010, there were more reissued patents than in any year in history. While patent holders can benefit from using the reissue process to correct patent defects, there are limitations that must be understood and considered.
For those looking for some CLE credit in the month
As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).
Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. In past posts, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination. More recently, I have discussed changes to petition practice for accelerating petition processing, and avoiding common petition issues when a Third Party withdraws from an inter partes patent reexamination.
With June drawing to a close, and with public comments due to the USPTO on the Streamline Proposals due today (June 29, 2011), this will be my final post of this multi-part series.
In this post I explain how a relatively common claim interpretation deficiency is overlooked by the USPTO, leading to unnecessary reexamination proceedings and expense for Patent Holders.
Continue Reading Reigning in Patent Reexamination Grant Rates
Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a Patent Office reexamination. For this reason, patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding.
Perceptions as to whether or not a stay is warranted will vary significantly, even though the same analysis is performed by each court. (See factor based analysis here). Attitudes vary across courts (ITC v. EDTX, v NDCA), even amongst judges of the same court.
Thus, a threshold determination for any defendant becomes:
How does Court/Judge X view requests for patent reexamination?…and is there somewhere I can find this information?
Continue Reading Judge-by-Judge Statistics on Stays Pending Patent Reexamination
As the saying goes, “almost” only counts in horseshoes and hand grenades. Recent events suggest that patent reform can now be added to the list.
Last week, H.R. 1249 was passed by the House. A copy of the bill, with all amendments, is found (here). A helpful mark-up illustrating the differences between the Senate Bill (S.23) and H.R. 1249 is found here, updated 6/28 to correspond to revised H.R. 1249. (Thanks to Brad Pedersen of Patterson Thuente Christensen & Pedersen for the mark-up).
As discussed last week, typically, the differences between the House Bill and Senate Bill would be reconciled by way of conference in the Senate. Yet, due to the politicizing of the fee diversion proposal of S.23 in the House (i.e., “the Republicans looking to increase government spending”), further tinkering with this proposal would seem risky. Perhaps recognizing that the “almost” compromise of H.R. 1249 is better than nothing in this economically charged political environment, the USPTO has signaled that 10 years of of patent reform bickering is enough already.
Continue Reading Patent Reform, Close Enough for Government Work?
Around 5:45 on Thursday, H.R. 1249, as modified by a Manager’s Amendment, was passed by the House (303 to 116). Fifteen separate amendments were offered, (previously discussed here) most of which were not adopted.
As H.R. 1249 substantively differs from the text of S.23, typically a Senate
As expected, the proposed prohibition against USPTO fee diversion has been excised from H.R. 1249. In a compromise proposal reached yesterday, collected fees that exceed USPTO appropriations for a given year will be maintained in a “Patent & Trademark Fee Reserve Fund.” The excess fees would be subject to return to the agency, upon congressional approval. Unfortunately, the fees maintained in this fund would almost certainly be diverted, at least in some form, by future budget amendments.
The latest manager’s amendment can be found (here) with the fee diversion compromise at Sec. 22. A statement of the Obama Administration’s concern on the compromise of Sec. 22 may be found (here). You can find a complete Bill summary, as well as rebuttal to the contitutionality arguments concocted by opponents. (here)
USPTO Director Kappos issued the following
Former Microsoft founder Paul Allen has made headlines recently by asserting the patents of his company, Interval Licensing against the 11 industry stalwarts (Apple, Google, Facebook, NetFlix, AOL and others). The case was initially stalled when the court found the opening complaint lacking in detail, but this formality was quickly corrected. Last week, however, a much more significant roadblock was placed in the path of Mr. Allen’s litigation endeavor—-patent reexamination. A judge in the Western District of Washington has halted the proceedings against all 11 defendants pending patent reexamination.
As most readers of this blog realize, obtaining a stay of an ongoing district court infringement action is one of the many benefits of patent reexamination parallel with litigation. Defendants that are able to obtain a stay pending patent reexamination can avoid cost prohibitive litigation discovery during the course of the USPTO proceeding, which can be rather lengthy.
In addition to cost savings, there are also tactical advantages to the USPTO proceeding. Unlike the courts, in patent reexamination, the USPTO does not recognize the presumption of validity. Moreover, the USPTO does not require the “clear and convincing” standard to demonstrate invalidity in patent reexamination, but employs the more liberal ”preponderance of the evidence” standard. As such, defendants can enhance the strength of their invalidity defense via patent reexamination. So, in essence, Interval Licensing is now facing a new challenge that must be overcome before the litigation resumes, and at much longer odds.
In considering if Interval Licensing’s interests would be prejudiced by a delay in the litigation of a length necessary to reexamine the patents at issue, the court emphasized the fact that Interval licensing is a holding company (known as a patent troll to some).
The full decision
Continue Reading Paul Allen’s Infringement Campaign Halted by Patent Reexamination