On August 6, 2013, the Board stayed Reexamination 90/012,669 on U.S. Patent No. 6,624,843, pending the completion of IPR2013-00432 on the same patent. See Lumondi Inc. v. Lennon Image Technologies LLC, IPR2013-00432, Paper 7 (August 6, 2013). Although the Board said that it will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch, in fact the Board has routinely stayed rexamiantions in favor of IPRs where the same claims are at issue.
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The First First-toFile Patent Issues
U,S, Patent No. D685,381 the first first-to-file patent to issue.
It didn’t take long, but as reported in Patently-O, the first first-to-file patent issued on July 2, 2013. U.S. Patent No. D685,381, which was filed on April 1, 2013, covers a Laptop Stand. Let the Post Grant Reviews begin!
July 10, 2013, Four New IPRs Filed
On July 10, 2013, TPK America, LLC filed IPR 2013-004333 on U.S. Patent No. 8294677 on Transparent capacitive touch panel and manufacturing method thereof, and IPR2013-00436 on U.S. Patent No. 8330738 on _Capacitive touch panel and electrode structure thereof; The Brinkmann Corporation filed IPR2013-00435 on U.S. Patent No. 8449289 on Multi-gas appliance; and Lumondi Inc. filed IPR 201300432 on U.S. Patent No. 6624843 on Customer image capture and use thereof in a retailing system.
April 23, 2013, Three New CBMR’s Break the Lull
On April 23, 2013, Harland Clarke Holdings Corp. filed CBM2013-00016 on U.S. Patent No. 8,346,637, and Volusion, Inc. filed CBM2013-00017 on U.S. Patent No. 6834282 and CBM2013-00018 against U.S. Patent No. 7426481.
April 26, 2013, One New IPR Filed
On April 26, 2013, Mobotix Corp. filed IPR2013-00255 on U.S. Patent No. 6970183.
Another Warning About Ex Parte Contacts
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBMR2012-00010, Paper 14 (January 24, 2013) Per 37 CFR 42.5(d), The PTAB again reminded us that all substantive communications with the PTAB must include all parties to the proceeding. A communication that identifies evidence and explains its irrelevance is a substantive communication.
PTAB Holds First Pretrial Conference
On January 22, 2012, the PTAB held the very first Pretrial Conference in an IPR in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026. The next day, the PTAB issued an order Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 22 (January 23, 2013), summarizing the matters discussed, which included:
- The Petitioner’s submission of evidence in response to objection by the patent owner (which was premature and will be expunged).
- The Scheduling, which may be changed if the proceedign in joined with a subsequently filed Petition
- The Protective Order
- Additional Discovery
- Motions
- Petitioner’s request for reconsideration
- Settlement
- Other Matters, including co-pending litigation, oral arguments, and the availability of Petitioner’s Expert.
The PTAB Actively Polices Improper Ex Parte Contacts
In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 24 (January 22, 2013), the PTAB rebuked Nissan for an ex parte email that it send to a Judge asking to “know the proper procedure for requesting judicial notice of [a] false statement.” The email included substantive arguments regarding the patent owner’s preliminary response. In addition to admonishing Nissan, the PTAB allowed the patent owner the chance to responde to the email.
PRACTICE TIP: Do not make ex parte conctacts with the PTAB except to set up a conference call, and do not include substantive infomrtion or argument in such a request.
Welcome to HDP’s AIA Blog!
The HDP AIA Blog is a convenient way to keep up with developments relating to the America Invents Act.
For the time being this is a purely internal blog, but we will considering making the blog public. We are counting on everyone to participate either by submitting posts or participating in discussions. Please contribute your thoughts about AIA implementation, and any useful information that you create or come across.
Ten Strategies for Exploiting Patent Reform
1. File Early and File Often.
Get a prompt early filing date for new developments with a provisional patent application. Update and re-file the provisional application as improvements are made. Get the earliest possible filing date for each development. Until there is clarity, do not trust the one year grace period where you do not have to.
2. Consider a Simultaneous Public Disclosure With Your Patent Filings.
Simultaneous publication with your patent filings creates an early prior art date in case you elect not to pursue your provisional patent application. (A provisional application that is never converted or refilled as a utility patent application is not prior art).
3. Control Which Law Applies To Your Application.
In most cases the old patent law is more advantageous to applications, so applicants will want to file all new applications and new continuation in part (C-I-P) applications before March 16, 2013. After March 16, 2013, applicants may want to segregate continuation applications from CIP applications that might be covered by the new law.
4. File Parallel Applications Under Both the Old And New Laws?
To the extent that an applicant perceives a benefit to being treated under the new law, that applicant may want to hedge its bets by filing an application before March 16, 2013, and a second C-I-P application with a slightly supplemented disclosure after March 16, 2013. The applicant can then have the new law apply simply by adding a claim to the supplemented disclosure at any time (but cancelling the claim won’t revert the application to the old law).
5. Watch What Your Competitors Are Up To.
Now more than ever it is a good idea to watch the applications of your competitors because the new patent law improves your ability to do something about it, by submitting prior art to the USPTO, Post-Grant Review (PGR) and Inter Partes Review (IPR).
6. Carefully Consider the Consequences of PGR and IPR
The new law provides two ways to challenge another’s patent, but the impact of estoppel provisions on the ability to defend subsequent litigation if the effort is not entirely successful must be carefully considered.
7. Don’t Throw Away Your Inventors’ Notebooks.
Many inventors will be disappointed to learn that the first-to-file does not mean they can throw away their notebooks. An inventor’s notebook can still be valuable proof that an invention was not derived from another.
8. Document Your Disclosures to Third Parties.
Document your disclosures to third parties, noting what was disclosed, when it was disclosed, and to whom it was disclosed. This could be valuable proof that a third party derived the invention from you.
9. Consider the Effect of Publication of Your Application
While publication of your application locks in its prior art effect as of its filing date, and creates provisional patent rights, it also starts the one-year clock for initiating derivation proceedings against competing applications or patents.
10. Thoroughly Vet Your Patents before Enforcement
It has always been a good idea to pressure test your patent before heading to court, but the new patent law provides for Supplemental Examination to correct or remove many of the potential defects you might discover.