Inadvertent Disclosure of Reexamination Strategies Protected by Court
In Acer Inc., et al v.
Technology Properties Limited LTD et al. (NDCA), the plaintiffs
are seeking a declaratory judgment of non-infringement and
invalidity of TPL patent 5,809...
D.C. - (Mealey's) The U.S. Supreme Court on Nov. 29 granted certiorari in a
case that could clarify the evidentiary standard for establishing patent
invalidity in response to allegations of infringement ( Microsoft Corp. v.
In this Emerging Issues commentary, Tom Tuytschaevers, an associate at Sunstein Kann Murphy & Timbers LLP, discusses a recent federal court case, Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) . He states that the "decision makes...
Cancellation of Dependent Claim Deemed "Amendment in Effect"
If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may...
Lockwood Reexamination Gripe Goes
As discussed last week, the case
v. Sheppard, Mullin, Richter & Hampton was recently argued before
the CAFC. Wasting no time, today, the CAFC affirmed the lower court ruling
Substantially Identical...More than Meets the Eye!
An interesting issue raised
by any post grant claim amendment (e.g., patent reissue and/or patent
reexamination) is: For a given claim, what is the degree of amendment (i.e.,
change in scope) that...
The USPTO can Demonstrate the What, Where, Why, and
The affirmative defense of
inequitable conduct is commonplace in most patent disputes. Indeed, many have
labeled this defense a "plague" due to its over-use by defendants. The
LONDON, 2 November 2010 - Management boards and general counsel are urged to revaluate the remit of their legal teams in a thought-provoking new report, "The Profitable Legal Department: How legal departments can prosper by generating revenue for...
WASHINGTON, D.C. - (Mealey's) Four months after inviting the views of the U.S. solicitor general, the U.S. Supreme Court on Nov. 1 agreed to hear a case that could better define the rights of federal contractor universities in patent disputes arising...
Recapture and Formality Issues Bog Down Important Cases
As shown in the charts above
(click to enlarge images), we analyzed the 745 broadening patent reissues filed
since 2005. A surprising 200 applications of the 745 were ultimately
By Malvern U. Griffin III and Jason V. Chang
In Fujitsu Ltd. v. Netgear Inc., No. 2010-1045 (Fed. Cir., September 20, 2010) [ enhanced
version available to lexis.com subscribers / unenhanced
version available from lexisONE Free Case Law ], the U...
On October 13 th , the
Federal Circuit held in Solvay v. Honeywell International that, in
order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2) ,
the prior invention must have been conceived in the United States. The
In what is likely to be
considered a leading decision on the issue of patent misuse, an en banc panel in
Princo Corp. v. ITC , 616 F.3d 1318 (Fed.
Cir. 2010) [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE...
Robinson , Tillman
J. Breckenridge and Daniel
Scott Leventhal On
October 12, 2010, the Supreme Court of the United States granted certiorari
to determine what legal standard should apply to proving the mental state
required for a party to...
Creative Motions Undermine Delay Prejudice
Earlier this week, we explored an
often overlooked rule that could be used by creative defendants to accelerate
inter partes patent reexamination . The rule, 37 CFR
1.953(b), allows parties to an inter...
The U.S. Department of Commerce (DOC) is seeking comments from the public
(including small and medium-sized companies) designed to help shape government
programs for protecting intellectual property rights of U.S. businesses in
From the United States Patent and Trademark Office :
new Office of the Chief Communications Officer and
Office of Equal Employment Opportunity and Diversity reporting to the Under
Secretary and Director
and Trademark Appeal Boards...
Tax Group Seeks Special Legislation Banning Tax Strategy Patents
As if the prospects of any
meaningful patent reform this year weren't dim enough, another special interest
group has joined the fray. Yesterday, the AICPA sent a letter to Congress...
By Bruce D. Sunstein , a member of our Patent Practice Group
On September 1, the United States Patent and Trademark Office issued updated guidelines
for use by patent examiners in determining when the subject matter
claimed in a patent application...
By Thomas Carey , a member of our Business Practice Group
Competitors sometimes choose
to share patent rights by pooling their patents and authorizing each
entity to license the combined bundle of patents. These arrangements
have long been...
BPAI Once Again Shoots Down Broadening Reissue
Patent reissue has been a recurring topic here as of
late. More recently, the
breadth of the recapture doctrine has been discussed . Earlier this
year, I discussed ex
parte Staats relative to a pending...
New Ex Parte Patent Reexamination Pilot Program a Tough
Back in August, I reported
on a new
USPTO pilot program designed to decrease pendency in ex parte patent
reexamination by seeking waiver of the right to file a Patent Owner
Can Inconsistent Statements Made
Outside of the USPTO Surrender Claim Scope for Recapture Purposes?
The recapture doctrine of patent
reissue is often a subject of debate before the BPAI. As we
discussed last week, the question of the propriety
Managers Amendment S.515 Shows New Momentum
A letter was sent to
Majority Leader Harry Reid today ( here )
by a bipartisan group of senators asking him to bring patent reform legislation
to the Senate floor for a vote "as soon as possible."...
U. Griffin III , William F. Long , Joshua D. Curry , and Rhett S. White
The false patent marking
statute, 35 U.S.C. § 292 , permits any person to bring a qui tam suit on
behalf of the United States against a patent holder and...