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Tim Bradley Of Coats And Bennett Named Webmaster Of Triangle Intellectual Property Law Association

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Created on Monday, 16 April 2012 14:21

Written by Timothy Bradley

Local IP Attorney Brings Experience In Computer Technology And Engineering
To Group Uniting Professionals In The Intellectual Property Law Field

CARY, N.C. – Coats and Bennett, PLLC, an intellectual property law firm, has announced that Timothy Bradley, a patent attorney with the firm, has been named webmaster of the Triangle Intellectual Property Law Association (TIPLA). TIPLA aims to unite professionals in the intellectual property law field while protecting and preserving the future of patent, trademark and copyright law.

At Coats and Bennett, Bradley uses his experience as a software engineer to handle patent matters involving telecommunications, software, and other technology. He holds a degree in computer engineering from the University of Notre Dame and a Juris Doctor from the Wayne State University Law School in Detroit. In addition to his position as TIPLA webmaster, he serves as co-editor of the IP Links publication of the Intellectual Property Section of the North Carolina Bar Association (NCBA) and also serves on both the technology committee of the NCBA and the Internet communications committee of the young lawyers division of the NCBA.

“Serving as webmaster for TIPLA will allow me to fuse my expertise in technology with my passion for intellectual property law,” said Bradley. “I am excited to promote TIPLA by improving the design and functionality of the group’s website.”

Striving Towards Cheaper Patent Litigation Alternatives

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Created on Tuesday, 10 April 2012 20:37

Written by Justin Leonard

Coats + Bennett has submitted the following comments to the rules proposed by the Patent Office regarding Post-Grant Review and Inter Partes Review, namely 77 Fed. Reg. 442 published in the Federal Register on January 5, 2012:

One of the biggest problems with the current patent system is the high cost of patent litigation. The enforcement of a patent in court, or the defense of a patent infringement claim, may cost as much as $2 million or $3 million through trial, and may exceed $10 million in complex cases. Patent trolls and corporate bullies tactically exploit this high cost of litigation to demand settlements that are unwarranted by the merits of their asserted claims. The significant litigation expense required to prove the asserted claims lack merit corners defendants into settlement and perpetuates defective patents.

Sensitive to high litigation costs and the abusive assertion of meritless claims, Congress recently overhauled procedures before the Patent Office intended to provide less expensive alternatives to litigation for addressing likely invalid patent claims.  Congress termed these review procedures “Post-Grant Review” and “Inter Parties Review.” By petitioning for the institution of these procedures at an early stage in patent litigation, a defendant-petitioner could theoretically avoid significant litigation expense by resolving validity challenges at the Patent Office rather than in court.

            Congress authorized the Patent Office to make rules regarding certain aspects of these review proceedings. The Patent Office recently proposed rules, for example, governing when a patent owner’s motion to amend his or her patent should be denied. 37 C.F.R. 42.121 (Inter Partes Review) and 37 C.F.R. 42.221 (Post-Grant Review). Under these proposed rules, the Patent Office will deny an owner’s motion to amend only when (1) the amendment does not actually respond to the petitioner’s validity challenges; or (2) the amendment seeks to broaden the patent or to introduce new subject matter.

The proposed rules, however, fail to implement the review proceedings as a true alternative to litigation for a defendant, as envisioned by Congress.  An asserted patent must stand “as-is” in litigation, meaning that the court must strike down invalid patent claims rather than amending the claims to make them valid. The Patent Office’s proposed rules fail to enforce that same binding treatment on an asserted patent.  The rules allow a patent owner that has already instituted litigation against the defendant an opportunity to retroactively fix patent validity problems, even though the patent owner would not have had that same opportunity in litigation.  The review proceedings therefore effectively serve as an unintended healing ground for an invalid patent that has already been asserted, rather than as a true alternative to defend against that invalid patent.  The defendant is left with a compelling incentive to incur the high litigation costs required to invalidate the asserted patent, or to simply settle in order to avoid those costs.

The Patent Office should use its regulatory power to prohibit a patent owner from amending patent claims that are currently being asserted against a defendant-petitioner. In particular, the Patent Office should add a new subpart (c)(3) to rules 42.121 and 42.221 as follows:

(c)(3) The patent is subject to pending litigation.

Prohibiting amendments to a patent subject to litigation would not be unfair to the patent owner. Because an asserted patent must stand “as is” in litigation, mirroring this same binding treatment at the Patent Office does not take anything away from the patent owner. Moreover, the patent owner can still initiate reissue proceedings before asserting his or her patent in order to correct any defects in the issued claims. The proposed rule additions thus simply encourage thoughtful pre-filing review by a patent owner, and avoid rewarding a patent owner that proceeds directly to litigation with a defective patent.

At the same time, the proposed rule additions would advantageously make Post-Grant Review and Inter Partes Review a true alternative to litigation for a defendant. Indeed, prohibiting a patent owner from retroactively fixing validity problems will motivate a defendant to institute Post-Grant Review or Inter Partes Review in order to invalidate asserted claims rather than reluctantly settling in the face of high litigation costs. Post-Grant Review and Inter Partes Review would therefore serve to not only subdue abusive litigation, but also serve to increase patent quality.

The time window for commenting on these rules closes today, April 10. The Patent Office has not yet established a date on which it will establish the final rules in view of the public's comments.

Want Cheaper Patent Litigation? Here's Your Chance.

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Created on Friday, 06 April 2012 13:47

Written by Justin Leonard

One of the biggest defects in our patent system is the high cost that a company must incur to defend itself in court against a charge of patent infringement.   The defense of patent cases routinely costs between $2 million and $5 million, and in high stakes cases can exceed $10 million.  When faced with these high costs of litigation, many defendants charged with patent infringement choose to enter into large settlements that are less than the likely costs of defense, even when the asserted claims lack merit.  This prospect of obtaining a large settlement for even meritless patent claims encourages some patent owners to be overly aggressive in asserting their patents.  Non-practicing patent owners, for example, have been labeled as the notorious “patent trolls” because of their tendency to file frivolous patent lawsuits.

Sensitive to high litigation costs and the abusive assertion of meritless claims, Congress recently overhauled procedures before the Patent Office intended to provide less expensive alternatives to litigation for addressing likely invalid patent claims.  Congress terms these procedures “Post-Grant Review” and “Inter Parties Review.”  A defendant sued for infringing a patent triggers these review procedures by petitioning the Patent Office, rather than the court, to assess the validity of the asserted patent.  If the defendant triggers the review procedures within 9 months of the patent issuing, the defendant may institute Post-Grant Review and challenge the patent’s validity on most any grounds, including not only novelty and obviousness grounds but also indefiniteness and subject matter grounds.  After 9 months from issuance, though, the defendant may only institute Inter Partes Review and challenge the patent’s validity on novelty and obviousness grounds.

Congress generally afforded the patent owner one chance to request that the patent be amended in response to validity challenges.  However, Congress did not itself establish rules governing this amendment process.  Instead, Congress charged the Patent Office with creating these rules, including rules for example that dictate when a patent owner’s motion to amend should be denied.  The Patent Office recently proposed these rules. See here and here.  Under these proposed rules, the Patent Office will deny an owner’s motion to amend only when (i) the amendment does not actually respond to the defendant’s validity challenges; (ii) the amendment seeks to broaden the patent; or (iii) the amendment seeks to introduce new subject matter.

The proposed rules simply fail to implement the review proceedings as a true alternative to litigation for a defendant, as envisioned by Congress.  An asserted patent must stand “as-is” in litigation, meaning that the court must strike down invalid patent claims rather than amending them to make them valid. The Patent Office’s proposed rules fail to enforce that same binding treatment on an asserted patent.  The rules allow a patent owner that has already instituted litigation against the defendant an opportunity to retroactively fix patent validity problems, even though the patent owner would not have had that same opportunity in litigation.  The review proceedings therefore effectively serve as an unintended healing ground for an invalid patent that has already been asserted, rather than as a true alternative to defend against that invalid patent.  The defendant is left with a compelling incentive to incur the high litigation costs required to invalidate the asserted patent.

The Patent Office should adjust the proposed rules governing the review procedures so that the procedures function as a true alternative to litigation for a defendant.  In particular, the rules should deny a patent owner’s motion to amend his or her patent when the owner has already asserted the patent against a defendant who triggered the review proceedings.

Striving to improve the patent system for its clients, Coats + Bennett is submitting proposed modifications to the Patent Office’s rules. If you share our concern for the patent system, we encourage you to echo our proposed modifications by submitting comments to the Patent Office here. Comments must be submitted by April 10 and particularly pertain to modifications of proposed 37 C.F.R. 42.121 (Inter Partes Review) and 37 C.F.R. 42.221 (Post-Grant Review).

Three Attorneys With Coats And Bennett, PLLC, Selected Among 2011 NC Legal Elite

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Created on Friday, 30 March 2012 13:24

Written by Anthony Biller

Larry Coats, Anthony Biller And John Owen Of Cary-Based
Intellectual Property Law Firm Honored In Survey By Business North Carolina

CARY, N.C. – Coats and Bennett, PLLC, an intellectual property law firm, has announced that three of its attorneys, Larry Coats, Anthony Biller and John Owen, have been named in the 2011 NC Legal Elite, the 10^th annual survey by Business North Carolina magazine asking the state’s lawyers who they consider to be the best in their field in 14 business-related specialties. Coats, Biller and Owen finished among the top attorneys statewide listed in the category of intellectual property.

Coats, a senior member and co-founder of Coats and Bennett, has written and prosecuted more than 1,000 patent applications during his 35 years of experience in all areas of intellectual property. Biller is a full-time litigator with 15 years experience who represents clients in patent, trademark, copyright, trade secrets and related disputes in courts throughout the United States and teaches IPR Litigation at Campbell Law School. Owen has prepared and prosecuted a wide variety of patent, trademark and copyright cases, with clients ranging from Fortune 500 corporations to individuals.

“On behalf of everyone at Coats and Bennett, I congratulate Larry, Anthony and John on receiving this prestigious honor,” said David Bennett, co-founder and managing partner of Coats and Bennett. “To be voted among the best in the state by your peers speaks volumes about your effectiveness, and we are grateful to have such talented attorneys as part of our team in intellectual property litigation.”