Jay is a founder of Lithosphere Software and a partner at the law firm of Novak Druce Connolly Bove + Quigg LLP. He has amassed over 11,000 hours of experience with invalidity contentions over his 15 year legal career.
Numerous hours have been devoted to crafting invalidity contentions, claim charts, analyzing prior art references, preparing, defending and taking fact and expert depositions, managing expert reports, and developing trial and summary judgment records in support of and against invalidity contentions. Further experience includes participation in more than 35 reexamination proceedings on behalf of Requesters and Patent Owners.
One recent reexamination request, ordered on April 23, 2013, involves Macrosolve's U.S. Patent No. 7,822,816. A presentation (OTH-A) outlining the Benigno PCT (WO 99/33390) was included as part of the ex parte request (Control No. 90/012,829).
A significant amount of invalidity contention experience was the result of efforts defending clients against the Ronald A. Katz Technology Licensing patent portfolio. The below table includes examples of other recently filed ex parte reexamination requests against certain Katz patents. You can also locate the prior art references applied in the Katz ex parte reexamination requests here: '120 patent; '134 patent; '863 patent; and '984/'252 patents.
|Patent No.||Control No.||Order Date||1st OA Date||OA Response||2nd OA Date||OA Response|
|5,974,120||90/012,400||September 5, 2012||January 16, 2013||March 18, 2013||N/A||N/A|
|6,349,134||90/012,404||September 28, 2012||January 31, 2013||April 1, 2013||N/A||N/A|
|5,684,863||90/012,407||October 1, 2012||February 1, 2013||April 1, 2013||N/A||N/A|
|5,128,984||90/012,679||November 19, 2012||March 29, 2013||May 29, 2013||N/A||N/A|
|5,251,252||90/012,680||November 19, 2012||April 1, 2013||June 1, 2013||N/A||N/A|
Other experience includes:
Innovative Global Systems, LLC v. Volvo Construction Equipment North America, LLC et al. (remote vehicle monitoring systems)
55 Brake LLC v. Audi of America, et al. (electronic parking brake systems)
MHL Tek v. Nissan Motor Company, et al. (tire pressure monitoring systems)
In re Ronald A. Katz Interactive Call Processing MDL 1816 (interactive voice response systems)
Centillion Data Systems, LLC v. BellSouth Corporation, et al. (bill processing and delivery systems)
Caterpillar Inc. v. International Truck & Engine (fuel delivery control systems)
GTE v. Nokia and AT&T Wireless (cellular telephone activation systems)
Honeywell v. The United States et al. (on-board oxygen generating systems - OBOGS)
Verizon California Inc. v. Ronald A. Katz Technology Licensing (interactive voice response systems)