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November 19, 2020
Federal Circuit reverses judgment transferring three surfing-attraction patents
The United States Court of Appeals for the Federal Circuit reversed a Southern District of California judgment that would have required assignment of U.S. Patents 9,044,685, 9,302,189, and 9,592,433 to a former employer. Mr. de la Cerra argued the appeal for the inventors and their company, Pacific Surf Designs, Inc. The Court held the employment agreement’s invention-assignment clause void under California Business and Professions Code § 16600, because it restrained a former employee from practicing his profession as to inventions conceived after employment and without use of the former employer’s confidential information. California Labor Code § 2870 did not save the clause. The former employer therefore lacked standing to contest inventorship. Judgment was entered for the defendants, who retained the patents. Whitewater West Industries, Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020) (Nos. 2019-1852, 2019-2323).
August 15, 2012
Eastern District of Texas upholds enforceability of U.S. Patent 6,117,073
The District Court for the Eastern District of Texas upheld the enforceability of U.S. Patent 6,117,073. The Law Office of Manuel de la Cerra represented the patentee before the District Court as well as before the Patent Office. The ’073 Patent had originally been found unenforceable by the District Court, at which time Mr. de la Cerra was hired to represent the patentee. The decision was appealed and the appellate court reversed the finding and remanded back to the District Court for rehearing. In the meantime, a third party attempted to invalidate all the claims of the ’073 Patent through reexamination. Mr. de la Cerra successfully represented the patentee and persuaded the Patent Office to confirm the validity of all the ’073 patent claims. Upon remand, Mr. de la Cerra represented the patentee in the rehearing on the motion to render the ’073 Patent unenforceable. The District Court found in favor of the patentee, relying in part on Mr. de la Cerra’s successful defense of the ’073 Patent during reexamination. The District Court case is Golden Hour Data Systems, Inc. v. EMSCharts, Inc., case number 06:CV-381, United States District Court, E.D. of Texas.
November 19, 2012
Reexamination certificate invalidates virtually all claims of U.S. Patent 5,393,170
The U.S. Patent Office issued a reexamination certificate invalidating virtually all the claims of U.S. Patent 5,393,170 during a reexamination prepared and filed by the Law Office of Manuel de la Cerra. The ’170 Patent had been the subject of a long-running lawsuit during which Mr. de la Cerra successfully persuaded the Patent Office to invalidate all the claims of the ’170 Patent as originally filed. The patentee amended the claims and added new claims, which the Patent Office accepted and allowed. Mr. de la Cerra then re-petitioned the Patent Office to reexamine the ’170 Patent, and with the exception of a single claim, the Patent Office invalidated all the new and amended claims. Patent Office serial number 90/011525.
October 15 & November 7, 2012
Patent Office orders reexamination of remaining asserted claims
Based on reexamination requests prepared and filed by the Law Office of Manuel de la Cerra, the U.S. Patent Office ordered reexamination of pending and asserted claims in a long-running patent lawsuit — claim 33 of U.S. Pat. 5,393,170 and claims 13, 37, 40, and 45–57 of U.S. Pat. 5,564,859. Originally, the patentee began with three patents and 21 claims asserted against Mr. de la Cerra’s client. Through these efforts, all the originally asserted claims were invalidated, and the amended claims were poised for the same. Patent Office serial numbers 90/012462 and 90/012649.
Press
Local wave machine company successfully invalidates competitor’s patents
Business Wire, 2010
U.S. Patent Office invalidates all asserted claims in GPS golf products lawsuit
PRWeb, 2010
Prior results do not guarantee a similar outcome.
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