LexisNexis® Legal Newsroom
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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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....

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...

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...

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...

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...

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...

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...