Intellectual Property

Recent Posts

Patents Post-Grant: Un-Staying Litigation Despite Ongoing Patent Reexamination
Posted on 24 Oct 2011 by Scott A. McKeown

By Scott A. McKeown District Court Stay Pending Patent Reexamination By-passed Via ITC The initiation of patent reexamination parallel to a district court patent infringement proceeding has become quite routine over the past few years. The use... Read More

Patent Reexamination as a Form of Litigation Damage Control
Posted on 26 Jul 2010 by Scott A. McKeown

Threat of Injunction Dissolves in Flexiteek Litigation The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation... Read More

Patents Post-Grant: Getting the CAFC to Take Note of Your Patent Reexamination
Posted on 9 Aug 2012 by Scott A. McKeown

Working Patent Reexamination Developments Into the Appeal Record Previously, I discussed how an appellant sought relief at the CAFC from an earlier Markman Order under Fed. R. Civ. P. 60(b) . The Appellant argued on appeal that a recently concluded... Read More

Patents Post-Grant: SNQ Plus – A New Game for Patent Reexamination
Posted on 26 Jul 2011 by Scott A. McKeown

New Therasense Guidelines to Invite Extrinsic Evidence Abuse? As discussed yesterday, the USPTO has proposed to modify asepcts of Rule 1.56(b) and Rule 1.555 (b) to comport to the materiality standard of the recent Therasense decision of the CAFC ... Read More

Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Supplemental Examination
Posted on 18 Sep 2012 by Fitch, Even, Tabin & Flannery

As we reported earlier, on August 14, 2012, the U.S. Patent and Trademark Office (USPTO) published final rules in the Federal Register implementing supplemental examination provisions and revised reexamination fees. The patent owner may file a request... Read More

Troutman Sanders LLP: Litigation and Reexamination Lead to Different Results in Patent Case
Posted on 6 Jun 2012 by Troutman Sanders

By Dabney Carr In a precedential decision on May 17, the Federal Circuit affirmed the PTO's rejection in reexamination of patent claims on the grounds of obviousness even though the Court had previously affirmed a district court's judgment... Read More

Patents Post-Grant: Streamlining Petition Practice Management in Inter Partes Patent Reexamination
Posted on 6 Jun 2011 by Scott A. McKeown

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination . For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near... Read More

Patents Post-Grant: USPTO Proposes Overhaul to Patent Reexamination Proceedings
Posted on 25 Apr 2011 by Scott A. McKeown

June Meeting to Consider Proposed Changes As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional... Read More

Patents Post-Grant: CAFC Affirms Rejection of Means Plus Function Claims in Patent Reexamination
Posted on 21 Apr 2011 by Scott A. McKeown

In re Lund Affirmed Per Curiam Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) ( here ). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim... Read More

The Patent Reexamination Paradox of 35 USC 112
Posted on 12 May 2010 by Scott A. McKeown

It would be so nice if something made sense for a change - Alice (in Wonderland) Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851). Claim 1 recites the... Read More

Case Stayed 5 years in Favor of Inter Partes Patent Reexamination to Restart?
Posted on 29 Jul 2010 by Scott A. McKeown

Back on September 25, 2005, Judge Farnan of the United States District Court for the District of Delaware stayed the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc. ( Civil Action 03-185 ) relating to U.S. Patent 6,523,680 . The... Read More

Patents Post-Grant: Paul Allen's Infringement Campaign Halted by Patent Reexamination
Posted on 23 Jun 2011 by Scott A. McKeown

Interval Licensing Litigation Stayed Pending Patent Reexamination 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... Read More

Patents Post-Grant: Ongoing Patent Reexamination Aids Summary Judgment on Invalidity
Posted on 22 Feb 2012 by Scott A. McKeown

Court Cites ACP as Supportive of Summary Judgment of Invalidity Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination... Read More

Patents Post-Grant: When to Petition/Appeal at the USPTO?
Posted on 4 Nov 2011 by Scott A. McKeown

Proper Petition Practice Especially Critical in Patent Reexamination In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered... Read More

CAFC Slates Patent Reexamination/Reissue Disputes for Early 2011 Resolution
Posted on 5 Jan 2011 by Scott A. McKeown

NTP Patent Reexaminations & Key Patent Reissue Cases With not much going on between holidays, a look forward to 2011 shows some interesting post grant issues teed up at the CAFC. Oral arguments have been scheduled for In re Tanaka (January... Read More