Wanted: Prior Art to Invalidate Lodsys Patents
Article One Partners is at it again, this time with four patents in the cross-hairs owned by the company suing Apple App Developers for patent infringement — Lodsys. Article One Partners has made a...
View ArticleTorpedoing Patent Rights
The vast number of America’s companies that need patents to prosper and grow should fear the post-grant provisions for challenging patents in H.R. 1249, the patent reform bill passed last month by the...
View ArticleStrategic Use of Inter Partes Reexam in Patent Litigation
While the applicability of Therasense is easy to see as it applies to prosecution of a patent application, the strategic opportunities presented in reexamination are not all together apparent on the...
View ArticleWhat’s Wrong with Reexamination and How to Make it Better
The real sin is that reexamination could be a much better process. Those in Congress talk about alleviating the burden on the district courts by having a reexamination proceeding available, but they...
View ArticlePatent Reform: Post Grant Review Musings
Why would we expect a new post-issuance review to work any better than the current prosecution process? Why are we to expect the Patent Office, which is certainly not equipped to handle litigation-like...
View ArticleAmerica Invents: How the New Law Impacts Your Patent Practice
The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it...
View ArticleCAFC: Intervening Rights for Claims Unamended During Reexam*
I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A...
View ArticleA Winning Patent Infringement Defense: Reexamination Creates Intervening...
Companies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a...
View ArticleCAFC: PTO Has Power to Reexamine Already Adjudicated Patents
The CAFC’s split panel decision this past week – In re Construction Equipment Company – extends the PTO’s authority to reexamine a patent even where its validity has already been adjudicated and...
View ArticleBio/Pharma Amici Brief Filed in Marine Polymer Reexam Appeal
On September 26, 2011, the a three-judge-panel of the United States Court of Appeals for the Federal Circuit issued a ruling in Marine Polymer Technologies, Inc. v. HemCon, Inc., which found...
View ArticleCAFC Muddle: Deciphering the Marine Polymer En Banc Ruling*
Where the en banc decision gets particularly interesting (and adversarial) is with respect to the second question, namely when does “intervening rights” apply to reexamined claims? By a 6 to 4 vote,...
View ArticleDueling Press Releases Over Reexamination Ordered by USPTO
The substantial new question of patentability standard is lower than the prima facie case of unpatentability standard needed for a patent examiner to make a valid rejection. In other words, just...
View ArticleApple Design Patent Rejected in Reexamination by USPTO
Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the center of their never-ending...
View ArticleTeaching Away Insufficient to Overcome Motivation to Combine References
While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have...
View ArticleCAFC Dismisses Inter Partes Reexamination Appeal By a Party Who was Not...
Waters argued that Agilent could not appeal, because Aurora was the third-party requester of the reexamination, not Agilent. The Court held that the relevant question was whether Agilent was a member...
View ArticleJudgment With Prejudice is Res Judicata and not Vacated Even if Mooted by...
Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held dismissal with...
View ArticleSCOTUS asked to consider proper scope of ex parte reexamination proceedings...
Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in scope to the question...
View ArticlePhillips Claim Construction Standard Applies to Ex Parte Reexam After Patent...
The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer...
View ArticleIn non-precedential decision CAFC reverses PTAB finding of obviousness in...
In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent...
View ArticleI hope Trump’s ‘America first’ will apply to inventors
I believe it’s not a good thing to be an inventor in the US and I hope that Trump’s “America first” will apply to inventors. Let me explain why. My name is Jean-Paul Castille, I have a degree in...
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