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Protecting the Public Domain

For various reasons, many of the patents issued by the U.S. Patent and Trademark Office ("PTO") actually contain no innovation.  Such patents effectively allow private actors to recapture ideas that were previously in the public domain.  PUBPAT protects the public domain from being recaptured in new patents through both litigation and the filing of requests for re-examination with the PTO.  A reexam request is the formal mechanism for asking the PTO to revoke an issued patent on the grounds that its idea is not new, but is instead nothing more than a reformulation of information that was already public.

WARF Stem Cell Patents
In July 2006, PUBPAT filed formal requests with the United States Patent and Trademark Office on behalf of the Foundation for Taxpayer and Consumer Rights, now known as Consumer Watchdog, to revoke three patents owned by the Wisconsin Alumni Research Foundation that purport to cover stem cells that are looting taxpayer funds and forcing research overseas. In its filings, PUBPAT submitted previously unseen prior art showing that the patents were - in fact - not new and, as such, should be revoked. The USPTO granted each of the requests in September 2006 and rejected all claims of each of the patents on March 30, 2007. The patent holder later amended its claims to narrow them over the original ones and the Patent Office then, incorrectly, decided to reissue those amended claims. In the one challenge where Consumer Watchdog had the right to appeal the Patent Office's erroneous decision to the Court of Appeals for the Federal Circuit, it did so in 2013.

Organic Seed v. Monsanto
In March 2011, PUBPAT filed suit on behalf of 60 family farmers, seed businesses and organic agricultural organizations against Monsanto Company to challenge the chemical giant's patents on genetically modified seed. The organic plaintiffs were forced to sue preemptively to protect themselves from being accused of patent infringement should they ever become contaminated by Monsanto's genetically modified seed, something Monsanto has done to others in the past. The case, Organic Seed Growers & Trade Association, et al. v. Monsanto, was filed in federal district court in Manhattan and assigned to Judge Naomi Buchwald. In June, 2011, 23 additional plaintiffs were added to the suit, bringing the total number to 83.

APTA v Arrivalstar: Public Transit
In June 2013, PUBPAT filed suit on behalf of the American Public Transportation Association (APTA) in federal court seeking to halt frivolous patent infringement claims against public transit systems throughout the country by two foreign companies, Arrivalstar S.A., located in Luxembourg, and its affiliate, Melvino Technologies Limited, an offshore firm in British Virgin Islands, that claim to have patents on arrival and status messaging systems for the transportation industry.

TMSOFT v Lodsys: Apps
In May 2013, PUBPAT was reained by TMSOFT, LLC, to defend it in the patent infringement suit brought against it by Lodsys in the Eastern District of Texas.

AMP v. Myriad: Gene Patents
On May 12, 2009, the Public Patent Foundation (PUBPAT) and the American Civil Liberties Union (ACLU) filed a lawsuit charging that patents on two human genes associated with breast and ovarian cancer are unconstitutional and invalid. The lawsuit was filed on behalf of four scientific organizations representing more than 150,000 geneticists, pathologists, and laboratory professionals, as well as individual researchers, breast cancer and women's health groups, and individual women. Individuals with certain mutations along these two genes, known as BRCA1 and BRCA2, are at a significantly higher risk for developing hereditary breast and ovarian cancers.

Gilead HIV/AIDS Drug
In March 2007, PUBPAT filed formal requests with the United States Patent and Trademark Office challenging four key HIV/AIDS drug patents held by Gilead Sciences, Inc. (NASDAQ: GILD). As part of its requests, PUBPAT submitted prior art that the Patent Office did not review before granting the patents to the Foster City, California, biopharmaceutical giant. PUBPAT also explained how the submitted prior art invalidates the patents and asked that the Patent Office undertake a review and revoke them. In July 2007, the Patent Office granted each of PUBPAT's requests and ordered reexamination of all four patents. In December 2007 and January 2008, the Patent Office rejected all of the claims of each of the patents.

Ritonavir HIV/AIDS Drug Patents
In August 2010, PUBPAT filed formal requests with the United States Patent and Trademark Office challenging the eight patents held by Abbott Laboratories (NYSE: ABT) listed in the FDA's Orange Book for the key HIV/AIDS drug ritonavir (marketed by Abbott under the brand name Norvir). As part of its requests, PUBPAT submitted prior art that the Patent Office did not review before granting the patents to the Chicago, Illinois based pharmaceutical giant. PUBPAT also explained how the submitted prior art invalidates the patents and, as such, asked that the Patent Office undertake a review of all eight patents and revoke them.

Patriot Scientific Processor Patent
In January 2007, PUBPAT filed a formal request with the United States Patent and Trademark Office to review a patent held by Patriot Scientific (OB: PTSC) that the company, which boasts of "primarily focusing on deriving revenue from licensing patents", is widely asserting against producers of computer microprocessors. In its filing, PUBPAT submitted prior art that the Patent Office was not aware of when reviewing the application that led to the issuance of the patent, described in detail how the prior art invalidates the patent and asked that the patent be revoked. In April 2007, the Patent Office granted PUBPAT's request for reexamination of the patent.

Silvers Photomosaic Patent
In September 2008, PUBPAT filed a formal request with the United States Patent and Trademark Office to review a patent on photomosaics, which are large pictures made by using many smaller pictures. The patentee, Mr. Robert Silvers, has been aggressively asserting the patent against many individuals, small businesses, and even against an important open source software program (GIMP). In its filing, PUBPAT submitted prior art that the Patent Office was not aware of when reviewing the application that led to the issuance of the patent (U.S. Patent No. 6,137,498), described in detail how the prior art invalidates the vast majority of the claims of the patent and asked that those claims of the patent be revoked. In November 2008, the Patent Office granted PUBPAT's request to reexamine the Silvers Photomosaic patent and in June 2009, the Examiner assigned to the reexamination issued a rejection of the vast majority of the patent's claims. In February 2010, the Examiner issued a final rejection of the cast majority of the claims in the patent.

EpicRealm Website Patents
In November 2006, PUBPAT filed formal requests with the United States Patent and Trademark Office to review two patents held by epicRealm Licensing Inc. that the patent licensing company - which offers no products or services - is widely asserting against providers of dynamic websites, i.e. websites that can produce custom responses to individual visitors or users. In its filings, PUBPAT submitted prior art that the Patent Office was not aware of when reviewing the applications that led to the two patents, described in detail how the prior art invalidates the patents and asked that the patents be revoked. In January, 2007, the Patent Office granted PUBPAT's requests. In June 2008, the PTO rejected the first of the two patents.

Opsware Virtualization Patent
In January 2007, PUBPAT filed a formal request with the United States Patent and Trademark Office to review a patent held by Opsware Inc. (NASDAQ: OSPW) that relates to remote computer management, but was preempted by the work of open source projects. In its filing, PUBPAT submitted prior art that the Patent Office was not aware of when reviewing the application that led to the issuance of the patent (U.S. Patent No. 7,124,289), described in detail how the prior art invalidates the patent and asked that the patent be revoked. In April 2007, the Patent Office granted PUBPAT's request for reexamination of the patent.

Forgent JPEG Related Patent
PUBPAT filed a formal request with the United States Patent and Trademark Office in November 2005 to revoke the patent Forgent Networks Inc. (Nasdaq: FORG) is widely asserting against the Joint Photographic Experts Group (JPEG) international standard for the electronic sharing of photo-quality images. In its filing, PUBPAT submitted previously unseen prior art showing that the patent, which was issued in 1987 to Forgent's subsidiary Compression Labs Inc., was not new and, as such, should be revoked. The PTO granted PUBPAT's request in February 2006 and rejected the broadest claims of the patent in May 2006. In November 2006, Forgent abandoned all assertion of the patent.

Pfizer Lipitor Patent
In September 2004, the Public Patent Foundation filed a formal request with the United States Patent and Trademark Office to revoke Pfizer Inc.'s patent on Lipitor, touted by the pharmaceutical giant as being "the best-selling treatment for lowering cholesterol and the best-selling pharmaceutical product of any kind in the world." In its filing, PUBPAT submitted prior art showing the patent, which issued in October 1999 and is not otherwise due to expire until 2016, was anticipated by earlier work of other inventors and, as such, should have never been granted. The PTO granted PUBPAT's request in December 2004 and rejected the patent in June 2005. In November 2005, Pfizer conceded to give up its original broad claims.

Microsoft FAT Patent
In April 2004, the Public Patent Foundation filed a formal request with the United States Patent and Trademark Office to revoke Microsoft Corporation's patent on the FAT File System, touted by Microsoft as being "the ubiquitous format used for interchange of media between computers, and, since the advent of inexpensive, removable flash memory, also between digital devices." In its filing, PUBPAT submitted previously unseen prior art showing the patent, which issued in November 1996 and is not otherwise due to expire until 2013, was obvious and, as such, should have never been granted. The PTO granted PUBPAT's request in June 2004 and provisionally rejected the patent in September 2004. In response to the rejection, Microsoft made amendments to the patent's claims. The PTO proceeded to allow the amended form of the patent. PUBPAT had no right to appeal that decision.

Columbia Axel Patent
In February 2004, PUBPAT filed a request for reexamination of Columbia University's patent on cotransformation, a process for inserting foreign DNA into a host cell to produce certain proteins that is the basis for a wide range of pharmaceutical products, including Epogen for anemia, Activase for heart attacks and stroke, Avonex for multiple sclerosis and Recombinate for hemophilia. PUBPAT's requrest showed that the patent, issued in 2002, violates the restriction against multiple patenting because Columbia previously received three other patents for the same invention in the 80's and early 90's. The three previous patents expired in 2000; the new patent will not expire until 2019. The Patent Office granted PUBPAT's request in May 2004 and Columbia voluntarily waived any right to assert the patent in December 2004.

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