Our patent lawyers have substantial experience in patent litigation and transactional matters, and our patent prosecution work is often a key component of a larger litigation or business strategy. One focus of this practice area is reexamination proceedings in the U.S. Patent and Trademark Office (PTO). Covington patent attorneys have handled both ex parte and inter partes reexamination proceedings, both as requester and as patentee. We work closely with our litigation colleagues to develop offensive and defensive strategies that involve reexamination proceedings, and then execute the strategy in the PTO, and in the courts. A key to our success has been the close interaction and coordination between the reexamination and litigation teams at Covington.
Representative Matters
- Representation of Alkermes, Inc., the top patent owner of Orange Book listed patents in reexamination, in the ex parte reexamination proceedings and worldwide opposition proceedings initiated by competitors. Six of the seven patents successfully emerged from reexamination and remain listable for the VIVITROL® and RISPERDAL® CONSTA® products. We also represent Alkermes in worldwide prosecution of patents directed to the BYDUREON™ product (exenatide for extended-release injectable suspension), a new drug formulation for the treatment of Type 2 diabetes.
- Representation of Trend Micro Incorporated as patent owner before the U.S. Patent and Trademark Office in ex parte reexamination proceedings relating to two patents directed to anti-virus technology. On August 23, 2011, the reexamination certificate for one patent issued. The second proceeding remains pending, with numerous claims confirmed as patentable. Trend Micro and third-party requester Fortinet recently settled state court litigation in which the validity of the patents was at issue.
- Representation of Verizon Communications Inc. as patent owner in four ex parte reexamination proceedings initiated by TiVo. The claims in two of the patents have already been confirmed as patentable without amendment, and the other two proceedings remain pending.
- Representation of Fujitsu Limited as patent owner in ex parte reexamination proceeding for a patent related to card type input/output interface devices. The patent is the subject of co-pending patent litigation, in which Covington represents Fujitsu Limited.
- Representation of the New York Times, CBS Interactive, and others as third party requester in ex parte and inter partes reexamination proceedings for three patents owned by Helferich Patent Licensing, LLC. Rejections have led to claim amendments in all three proceedings.
- Representation of Fougera Pharmaceuticals (formerly known as Nycomed US Inc.) as third party requester in ex parte and inter partes reexamination proceedings for patents owned by GlycoBiosciences, Inc. The patents, directed to topical gel compositions, are the subject of co-pending patent litigation, in which Covington represents Fougera. The litigation has been stayed pending the reexamination proceedings.
- Representation of Verizon Services Corp. as third party requester in inter partes reexamination proceedings for two patents owned by TiVo. A ll claims subject to reexamination stand rejected on multiple grounds.
- Representation of Samsung Electronics Co., Ltd. ("Samsung") in inter partes reexamination proceedings for a patent related to LCD color technology. Genoa Color Technologies Ltd. ("Genoa"), the original owner of the patent, sued Samsung for infringement. Samsung requested inter partes reexamination of the patent, and the Right of Appeal notice upheld the final rejection of all claims of the patent on a plethora of grounds. Subsequent to the Right of Appeal Notice, the parties settled the litigation.
- Representation of Verizon Long Distance LLC as a third-party requester before the U.S. Patent and Trademark Office in inter partes reexamination proceedings relating to two patents directed to Voice over Internet Protocol (“VoIP”) technology. Shortly after a Right of Appeal Notice issued in one of the proceedings, the corresponding district court litigation against Verizon was dismissed with prejudice, resulting in a favorable settlement for Verizon.
- Advising a digital camera manufacturer regarding reexamination proceedings in the context of a district court litigation and an International Trade Commission investigation.
- Advising a large television manufacturer regarding inter partes reexamination proceedings in the context of a multi-defendant district court litigation.
- Advising a large software company regarding reexamination proceedings in the context of a district court litigation.
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