Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Prosecution

IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

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Posted in USPTO

On January 24, 2014

Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway (“GPPH”): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet.

The Texas Two Step, A Tale of Two Texas District Courts’ Differing Views Concerning Stay Requests Pending Inter Partes Review

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Posted in Patent

On August 16, 2013

The District Courts for the Southern and Western Districts of Texas appear to have taken different positions with regard to estoppel in an inter partes review (“IPR”) context, in e-Watch v. FLIR Systems, Case No. 4-13-00638 (S.D. Texas) and e-Watch v. ACTi Corp., Case No. 5-12-cv-00695, (W.D. Texas), respectively. The apparent split arose when the courts were confronted with motions to stay their respective patent infringement lawsuits pending disposition of a petition for IPR brought by another defendant in a related patent lawsuit, e-Watch v. Mobotix Corp., Case No. 5-12-cv-00492, (W.D. Texas). Interestingly, the petition for IPR has not yet been decided by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office.

Resuscitating Therasense? CD Cal Court Finds Inequitable Conduct by Patentee

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Posted in Patent

On August 14, 2013

IP practitioners have witnessed the dearth of inequitable conduct findings in the wake of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). There, the Federal Circuit reiterated en banc that to establish unenforceability for inequitable conduct before the United States Patent and Trademark Office (“PTO”), a party must prove by clear and convincing evidence that (1) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, and that such act was done (2) with the intent to deceive or mislead. A few months ago, we reported on a case that continued to signal the death knell of this formerly ubiquitous defense, and thus begging the present question: is inequitable conduct even alive anymore? Of course it is.

Negative Claim Leads to “Udder” Failure

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Posted in Patent

On July 30, 2013

Judge Rich gave us the adage, “the name of the game is the claim.” Given the number of cases issued by the Federal Circuit on written description, perhaps the adage should be revised as “the name of the game is the claim – supported by the specification.” In In Re Bimeda Research & Development Ltd., the Federal Circuit issued another decision requiring the entire scope of the claims to be supported by the disclosure. While this is nothing new in patent law, the claim at issue is a negative claim that expressly excluded an element. The original claim was directed to a prophylactic method to treat infections in cow mammary glands by providing a physical barrier to the teat canal.

The USPTO Launches the Global Patent Search Network

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Posted in Patent

On July 22, 2013

On July 8, Teresa Stanek Rea, Acting Director of the United States Patent and Trademark Office (“USPTO”), announced on her official blog the launch of the Global Patent Search Network (“GPSN”). The GPSN is the result of a cooperative effort between the USPTO and China’s State Intellectual Property Office (“SIPO”). Users of the GPSN will be able to search full text Chinese patent documents and English machine translations, thus enabling searches in both English and Chinese. The initial database of documents will include published applications, granted patents, and utility models dated from 2008 to 2011. The database will be periodically updated. In addition, the USPTO anticipates the network will expand to include patent documentation from other foreign intellectual property offices.

Twitter’s Innovative Patent Agreement (“IPA”) is in Play . . . .

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Posted in Patent

On May 31, 2013

Last spring, we reported Twitter’s introduction of a novel employee patent assignment plan called the “Innovator’s Patent Agreement” (“IPA”). In short, the IPA is a patent assignment agreement, or transfer of patent ownership from an inventor/employee to a company, where the inventor retains control over how the patent is used. Twitter’s IPA now is in play.

Uniloc v. Rackspace – 35 U.S.C. § 101 Lockdown in the Eastern District of Texas

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Posted in Patent

On April 4, 2013

In Uniloc USA, Inc. v. Rackspace Hosting, Inc., Eastern District of Texas Chief District Judge Leonard Davis granted Rackspace’s motion to dismiss Uniloc’s complaint under Fed. R. Civ. P. 12(b)(6) for failure to allege infringement of a patentable claim under 35 U.S.C. § 101. This ruling is notable for several reasons: the Court granted an early motion to dismiss for the defendant in a historically pro-patentee jurisdiction (E.D. Texas), and the early dismissal resulted from the court finding the patent invalid under 35 U.S.C. § 101.

Federal Circuit Limits Discovery in Inter Partes Re-examination Proceedings

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Posted in Patent

On March 22, 2013

We reported last week on the discovery limitations under United States Patent and Trademark Office (“PTO”) guidelines as they pertain to inter partes review (“IPR”) proceedings. On Wednesday, in Abbott Labs. v. Cordis Corp., the Federal Circuit ruled that discovery is not allowed in inter partes re-examinations. The case stemmed from Abbott’s motion to quash two subpoenas duces tecum issued by Cordis which sought documents for use in a pending IPR re-examination. Id. at 2. In the underlying action, Cordis sued Abbott in the District Court for the District of New Jersey for infringement of two of its patents directed to drug-eluting stents. Id. at 3. The PTO agreed to inter partes re-examination of the patents and by office action, the examiners found both patents obvious. Id. at 3-4.

New USPTO Filing Fees Announced ….

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Posted in Patent

On January 24, 2013

IP practitioners are well aware of the new rules heralded by the America Invents Act (“AIA”). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to “recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents… and trademarks…, including administrative costs of the Office with respect to such patent or trademark fees.” Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 (“CFR”).

USPTO Launches First CBM Post-Grant Review

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Posted in Patent

On January 17, 2013

The America Invents Act (AIA), created a transitional program for post-grant review of certain patents claiming subject matter referred to as covered business methods (“CBM”). As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” 37 C.F.R. § 42.301 does, however, provide an exception for technological inventions. Whether a claim recites a technical feature is determined based on whether the claim is “novel and unobvious over the prior art; and [whether the claim] solves a technical problem using a technical solution.” Id.

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