The Patent Interferences practice at Oblon Spivak is one of the most active and successful interference practices in the United States.
As many patent attorneys will spend an entire career in the field without ever being involved in a fully litigated interference, our clients take great comfort in our years of experience in this highly specialized area. While technical and legal expertise are critical elements to success in this field, it is experience that ultimately matters most, and few firms can match Oblon Spivak’s depth of experience in this area.
Interference law is a complex subspecialty that involves many difficult tactical, procedural, and strategic decisions in diverse areas such as provoking interferences (which is often extremely difficult), count formation, motion practice, testimony, oral argument, court review, and settlement procedures. Interferences based on priority are only available in the United States, as it is the only jurisdiction that grants patent protection based on who was the first to invent instead of on which inventor was the first to file.
Because the scope of discovery in patent interferences is very limited, and an interference is usually resolved in less than a year, it can provide clients with the opportunity to challenge a competitor's patent validity at a significantly reduced cost, and relatively quickly compared to litigation in a district court.
Our attorneys understand all aspects of interference law and possess extensive technical expertise, with advanced degrees in the sciences and a wide range of technical disciplines. The group’s members have a comprehensive grasp of the procedures involved in interference proceedings and court review of the decisions of the Board of Patent Appeals and Interferences (BPAI) in interferences. They also possess extensive experience in patent prosecution, strategic patent transactions, and trial and appellate litigation and their interplay, which are key to developing and implementing a successful interference strategy.
We represent foreign and domestic companies in a variety of industries. Our team has handled interference matters in a broad spectrum of technologies including: biotechnology, medical devices, computer software, semiconductors, electronics, pharmaceuticals, and the full range of electrical, mechanical, and chemical arts. Working collaboratively with our experienced litigators, we strategically coordinate patent interferences and patent litigation to our clients’ advantage. Sometimes that includes the strategic use of interference to leverage our clients’ position in concurrent litigation in determining patent validity.
We handle patent interferences under 35 USC § 135 before the BPAI and court review of decisions by the BPAI in interferences under 35 USC § 141 and 35 USC § 146. We have successfully represented both patentees and applicants.
Deep Industry Involvement
Our attorneys have authored numerous articles and lectured frequently on timely interference topics for the American Intellectual Property Law Association (AIPLA), various bar associations, and other leading industry groups. Team members are active in the AIPLA's USPTO Inter Partes Patent Proceedings Committee (formerly known as the Interference Committee), including one attorney who was Chair of the Interference Committee and one attorney who is Chair of the USPTO Inter Partes Patent Proceedings Committee. In addition, our attorneys have long been proponents of a number of changes to interference rules and are at the forefront of advancing interference law.
Patent Interferences Representative Matters
Glaxo Group Ltd. v. Novartis Corp.
Client: Novartis Corp.
Responsible Attorneys: James J. Kelly (lead counsel during the administrative phase at the USPTO), Robert C. Nissen (lead counsel in the 35 USC § 146 action), and Charles L. Gholz (of counsel in both)
Description: Oblon Spivak successfully represented Novartis against Glaxo Group Ltd. in an interference relating to metered dose inhalers used to treat asthma, which represents a multibillion-dollar market. The interference involved four Glaxo patents. The firm worked closely with in-house counsel and expert witnesses to achieve a favorable outcome. Glaxo subsequently filed a 35 USC § 146 action in the United States District Court for the District of Columbia to have the interference decision reversed. The firm continues to represent Novartis in this follow-on litigation, which presents important issues concerning the scope of discovery in 35 USC § 146 actions.
Solvay Chemical v. American Electric Power
Client: Solvay Chemical, Inc.
Responsible Attorneys: W. Todd Baker (lead counsel)
Description: Oblon Spivak successfully represented Solvay in an interference concerning a clean technology process used to reduce the emission of SOx gas into the air when coal is burned. Solvay invented the process as a part of its service to its client American Electric Power, which later tried to patent the same process. The matter eventually settled in the Spring 2010.
Advanced Voice Recognition Systems, Inc (AVRS)
Client: Advanced Voice Recognition Systems, Inc (AVRS)
Responsible Attorneys: The Interference practice group is representing AVRS in the interference and in connection with Allvoice’s attempts to depose AVRS in the litigation. The Litigation practice group is representing AVRS in the Allvoice v. Microsoft litigation.
Charles L. Gholz (lead counsel in the interference and of counsel in the litigation), W. Todd Baker (back-up lead counsel in the interference), and Michael E. McCabe, Jr. (lead counsel in the litigation and of counsel in the interference)
Description: Advanced Voice Recognition Systems retained Oblon Spivak to provoke and then litigate an interference with Allvoice Developments LTD to determine the patentability of each party’s claims and, if necessary, determine which party was first to invent technology which allows correction of text output by a speech recognition engine.
Allvoice had previously sued Microsoft Corp. claiming Microsoft had infringed the same patent that is involved in the interference. Thus, the outcome of the interference with AVRS will be very important to Microsoft. This is a major market for Microsoft and several other large corporations.
Both Allvoice and Microsoft have sought to depose our client AVRS in the infringement litigation, and Oblon Spivak is also representing AVRS in connection with that.