W. Todd Baker
Partner
Bar Membership Other Than Virginia
Tel (703) 413-3000

W. Todd Baker

Partner

W. TODD BAKER is Chair of the firm’s Patent Interferences practice group and a leader in the Patent Reexamination/Reissue group. With significant experience in both patent reexamination and interference cases, Mr. Baker is able to strategically guide his domestic and foreign clients in provoking patentability proceedings or defending patents, providing alternatives to traditional litigation-based patent validity challenges.

A former Patent Examiner with the United States Patent and Trademark Office (USPTO), Mr. Baker is a recognized leader in post-grant practice, having served as the former Chair of the USPTO Inter Partes Patent Proceedings Committee (formerly known as the Interference Committee) of the American Intellectual Property Law Association (AIPLA). He helped found and regularly contributes to the firm’s Patents Post Grant Law Blog, providing insights and commentary on existing and proposed post-grant options, trends, practice tips and news relating to patent reexamination, reissue and the new post grant procedures introduced by the Leahy Smith America Invents Act.

Mr. Baker leads the Patent Reexamination/Reissue team responsible for mechanical technologies, nanotechnology, e-commerce and medical devices. He has extensive experience handling all aspects of post-issuance proceedings at the USPTO including prosecution, reissue applications, ex parte and inter partes reexamination proceedings, and appeals to the USPTO’s Board of Patent Appeals and Interferences (BPAI). He is particularly skilled at managing reexaminations happening concurrently with litigation.

As Chair of the firm’s Patent Interferences group, Mr. Baker leads the team, advising clients on issues of priority, patentability, derivation, inventorship, and licensing. He also handles patent interference prosecution matters before the USPTO’s Board of Patent Appeals and Interferences.

While focused on his post-grant practice, Mr. Baker also prepares and prosecutes patent applications in diversified electrical and mechanical technologies as a member of the firm’s Electrical and Mechanical Patent Prosecution groups. Among the technologies with which he has worked are wireless innovations, medical devices, dynamic control systems, clean technologies, and semi-conductor fabrication.

Representative Matters

Successfully argued on behalf of Convolve that provision of 35 USC §135(b)(2) is applicable only to patent applications having effective filing date after publication date of targeted published application. Ding et al. (Seagate) v. Singer et al. (Convolve), Int. No. 105,436 (BPAI Aug. 24, 2007).

Represented Bard Access Systems in patentability dispute over stent technology. McDermott et al. (Bard Peripheral Vascular) v. Murch (TriVascular2), Int. No. 105,657 (BPAI Mar. 20, 2009).

Represented Solvay in patentability/inventorship dispute over use of clean technology which reduces SOx emissions from coal-fired power plants.  Maziuk (American Electrical Power Company)  v. Ritzenthaler (Solvay Chemicals), Int. No. 105,693 (BPAI Mar. 15, 2010).

Representing Motorola in patentability/priority dispute over mobile communication technology. Lazaridis et al. (Research in Motion) v. Eggleston et al. (Motorola), Int. No. 105,700 (BPAI) (ongoing).

Representing Advanced Voice in patentability dispute over speech recognition interface technology. Mitchell (AllVoice Developments) v. Holt (Advanced Voice Recognition Systems), Int. No. 105,746 (BPAI) (ongoing).

Representing Hydro-Gear in patentability/priority dispute regarding hydraulic axle technology.  Acharya (Parker Hanifan) v. Hauser (Hydro-Gear), Int. No. 105,750 (BPAI) (ongoing).

No Interference from USPTO Solicitors at the CAFC?
Friday, October 29, 2010

Whether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

CAFC Denies Outsourcing of Inventorship to Foreign Countries
Friday, October 15, 2010

On October 13th, the Federal Circuit held in Solvay v. Honeywell International that, in order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2), the prior invention must have been conceived in the United States.

What to do with an Interfering Patent in Patent Reexamination?
Wednesday, September 29, 2010

This past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding.

Interference Rule 41.200(b) Taken Out of Its Misery
Friday, April 16, 2010
S.515 Provisions for a Post Interference World
Friday, April 09, 2010

… or is it?  Rumors of the demise of interferences via patent reform have been greatly exaggerated for years.  Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best.  In any event, we continue our review of S.515 provisions related to post grant matters.  On...

Preventing Harassment in Patent Reexamination: MPEP § 2240’s Smoking Gun Requirement
Wednesday, April 07, 2010

The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:
 

Treatment of the Recapture Doctrine at the BPAI post North American Container
Friday, April 02, 2010

All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan.  When is it OK to take a mulligan via reissue?  The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997.  As set out...

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