–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...
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...
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...
–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...
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...
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...
As first reported by PatentsPostGrant.com
in November 2009 , the patent reexaminations of NTP vs. RIM infamy were
soundly shot down by the BPAI. 
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...
-E.D. of Texas Defendants Seek to Ride Off Into the
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...
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...
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...
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....
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...
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...
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
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...
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 ).
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 .