Intellectual Property

Recent Posts

The New Texas Two-Step
Posted on 19 Feb 2010 by Scott A. McKeown

-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... Read More

BPAI to Streamline Appeal Procedures for Patent Reexamination
Posted on 3 Jun 2010 by Scott A. McKeown

In a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal... Read More

Judge Cites Length of Patent Reexamination in Denying Stay
Posted on 21 Jun 2010 by Robert Mattson

Earlier this month, a federal judge in Florida cited to the PTO's Ex Parte Reexamination Filing Data in denying an accused infringer's request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc. , Case... Read More

Patents Post-Grant: Streamlining Petition Practice in Inter Partes Reexamination
Posted on 23 Jun 2011 by Scott A. McKeown

When Inter Partes Patent Reexamination Becomes One Sided 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... Read More

The Rambus Patent Rexaminations
Posted on 11 Feb 2010 by Scott A. McKeown

Fashioning New and Improved Weapons? Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts. In widely publicized patent based disputes with Infineon,... Read More

USPTO Reexamination of Means Plus Function Claims
Posted on 11 Feb 2010 by Scott A. McKeown

–A Tale of Two Statutes – When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas. In the movie, Joe Pesci explains a painting (right) on his... Read More

Patents Post-Grant: CAFC Sends NTP Patent Reexaminations Back to USPTO
Posted on 1 Aug 2011 by Scott A. McKeown

BPAI Definition of Email Found Unreasonable by CAFC Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on... Read More

Design Patents & Reexamination – - A Discussion with Design Patent Expert Philippe Signore
Posted on 22 Feb 2010 by Scott A. McKeown

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features. Design patent are defined in scope by the content of the drawings as opposed to the words of a... Read More

The One-Two Reexamination Punch Knocking Out Plaintiffs
Posted on 1 Mar 2010 by Stephen Kunin and Scott McKeown

Another week, another patent litigation stayed in a California court pending a concurrent USPTO reexamination. This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation... Read More

Moving Toward a More Efficient Inter Partes Reexamination Proceeding
Posted on 11 Feb 2010 by Scott A. McKeown

Inter partes reexamination, has created new opportunities for the public to challenge the patentability of some or all claims of issued patents filed on or after November 29, 1999 and to actively participate at each stage in the reexamination proceedings... Read More

Making Your Reexamination News, Risky Business?
Posted on 24 Feb 2010 by Scott A. McKeown

The Electronic Frontier Foundation (EFF) Case Study On January 29, 2010 the USPTO ordered ex parte reexamination of claims 1-6 and 13-18 of C2 Communication Technologies' U.S. Patent 6,243,373 (90/010,716) at the request of the EFF. On the... Read More

NTP Reexaminations Move on to The Federal Circuit
Posted on 18 Feb 2010 by Scott A. McKeown

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... Read More

Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense
Posted on 24 Jun 2010 by Robert Mattson

When evaluating a request to stay litigation pending reexamination , district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will... Read More

Patents Post-Grant: Streamlining Petition Practice in Inter Partes Reexamination
Posted on 23 Jun 2011 by Scott A. McKeown

When Inter Partes Patent Reexamination Becomes One Sided 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,... Read More

Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?
Posted on 17 Feb 2010 by Scott A. McKeown

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... Read More

  • Blog Post: USPTO Reexamination of Means Plus Function Claims

    –A Tale of Two Statutes – When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas. In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he...
  • Blog Post: The Rambus Patent Rexaminations

    Fashioning New and Improved Weapons? Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts. In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years...
  • Blog Post: Moving Toward a More Efficient Inter Partes Reexamination Proceeding

    Inter partes reexamination, has created new opportunities for the public to challenge the patentability of some or all claims of issued patents filed on or after November 29, 1999 and to actively participate at each stage in the reexamination proceedings. Indeed, as noted yesterday, inter partes filings...
  • Blog Post: Patent Office Releases 2009 Reexamination Stats

    –Concurrent Litigation a Driving Force– The USPTO has released their year end statistics for ex parte and inter par tes patent reexamination. The ex parte statistics may be found here , the inter partes here . Ex parte numbers are down slightly, it is not clear whether this modest decrease...
  • Blog Post: Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part II 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 post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? ( Part I of IV )”, we discussed using pending reexamination proceedings...
  • Blog Post: Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?

    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...
  • Blog Post: NTP Reexaminations Move on to The Federal Circuit

    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 reexamination...
  • Blog Post: 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...
  • Blog Post: Design Patents & Reexamination – - A Discussion with Design Patent Expert Philippe Signore

    Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features. Design patent are defined in scope by the content of the drawings as opposed to the words of a set of claims. Further, design patents are accorded...
  • Blog Post: Making Your Reexamination News, Risky Business?

    The Electronic Frontier Foundation (EFF) Case Study On January 29, 2010 the USPTO ordered ex parte reexamination of claims 1-6 and 13-18 of C2 Communication Technologies' U.S. Patent 6,243,373 (90/010,716) at the request of the EFF. On the same day, USPTO ordered a second ex parte reexamination...
  • Blog Post: The One-Two Reexamination Punch Knocking Out Plaintiffs

    Another week, another patent litigation stayed in a California court pending a concurrent USPTO reexamination. This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind....
  • Blog Post: BPAI to Streamline Appeal Procedures for Patent Reexamination

    In a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times...
  • Blog Post: Judge Cites Length of Patent Reexamination in Denying Stay

    Earlier this month, a federal judge in Florida cited to the PTO's Ex Parte Reexamination Filing Data in denying an accused infringer's request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc. , Case No. 10-20528 (S.D. Fla. June 7, 2010) . Judge Cecilia...
  • Blog Post: Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense

    When evaluating a request to stay litigation pending reexamination , district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate...
  • Blog Post: Jury to Hear Evidence of Patent Reexamination Proceedings

    In our February series on the use of reexamination evidence in concurrent litigation, specifically " Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV), " we observed that some courts are, at best, ambivalent about the presentation of evidence pertaining...
  • Blog Post: Patents Post-Grant: Streamlining Petition Practice in Inter Partes Reexamination

    When Inter Partes Patent Reexamination Becomes One Sided 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...
  • Blog Post: Patents Post-Grant: CAFC Sends NTP Patent Reexaminations Back to USPTO

    BPAI Definition of Email Found Unreasonable by CAFC Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue . Today, the...