LEE E. BARRETT, a retired Administrative Patent Judge (APJ), serves as Of Counsel in the firm's Electrical and Mechanical Patent Prosecution and Patent Reexamination/Reissue groups. Mr. Barrett joined the firm following a distinguished 32-year career with the United States Patent and Trademark Office (USPTO), most recently as an Administrative Law Judge (ALJ) with the Board of Patent Appeals and Interferences (BPAI). For 16 years, he was responsible for hearing and deciding appeals from decisions of Patent Examiners in applications for patents, for reissue of patents, and in ex parte and inter partes reexamination proceedings.
Mr. Barrett authored many notable BPAI opinions, including such high-profile ones as:
· Ex parte Bilski, Appeal 2002-2257, Application 08/833,892 (BPAI 2006) (affirming a rejection under 35 U.S.C. § 101 of a business method of hedging), aff'd, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff'd, Bilski v. Kappos, 561 U.S., 130 S. Ct. 3218 (2010)
· Ex parte Translogic Tech., Inc., Appeal 2005-1050, Reexamination Control Nos. 90/006,392 et al. (BPAI 2005) (affirming obviousness rejection to serial multiplexer in reexamination after district court jury trial holding the patent valid and infringed), aff'd, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007)
· Ex parte Reiffin, Appeal 2007-2127, Reexamination Control No. 90/006,621 (BPAI 2007) (affirming rejection in reexamination based on lack of written description for "multithreading" and rejections based on anticipation and obviousness), aff'd, In re Reiffin Family Trust, 340 Fed. Appx. 651 (Fed. Cir. 2009) (nonprecedential)
Prior to becoming an APJ, Mr. Barrett spent eight years as an Associate Solicitor in the Office of Solicitor at the USPTO. He represented the Commissioner in preparing briefs and presenting oral arguments in appeals, and handled all phases of civil actions in district court. During this time he handled 60 appeals to the Federal Circuit and several civil actions.
As an Associate Solicitor he served as the technical and legal expert for the USPTO on the patentability of patent applications involving mathematical algorithms, computer hardware and software, and all complex areas of electrical engineering. He also was a Patentability Review Examiner (Electrical), and a Patent Examiner (Mechanical).
Mr. Barrett began his career as a Senior Mechanical Engineer in the Antenna & Microwave Section at Westinghouse Electric Corporation.
Experience
Representative Matters
Reported decisions on opinions authored as an Administrative Patent Judge (APJ) at the United States Patent and Trademark Office (USPTO):
· In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff'd, Bilski v. Kappos, 130 S.Ct. 3218 (2010)
· In re Fortunet, Inc., 232 F.3d 912 (table) (Fed. Cir. 2000)
· In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007)
· In re Translogic, 504 F.3d 1249 (Fed. Cir. 2007)
· In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009)
· In re Reiffin, 199 Fed. Appx. 965 (Fed. Cir. 2006)
· In re Reiffin Family Trust, 340 Fed. Appx. 651(Fed. Cir. 2009)
· Hyatt v. Dudas, 2005 WL 5569663 (D.D.C. Sep. 30, 2005), aff'd, Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009)
Reported Federal Circuit appeals argued as Associate Solicitor:
· In re Cho, 813 F.2d 378 (Fed. Cir. 1987)
· In re Constant, 827 F.2d 728 (Fed. Cir. 1987)
· In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)
· In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)
· In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)
· In re Hamilton, 882 F.2d 1576 (Fed. Cir. 1989)
· In re Grams, 888 F.2d 835 (Fed. Cir. 1989)
· In re Young, 927 F.2d 588 (Fed. Cir. 1991)
· In re Buchner, 929 F.2d 660 (Fed. Cir. 1991)
· In re Amos, 953 F.2d 613 (Fed. Cir. 1991)
· In re Gal, 980 F.2d 717 (Fed. Cir. 1992)
· In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993)
· In re Schrader, 22 F.3d 290 (Fed. Cir. 1994)
· In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994)
· In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994)
· In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994)
· In re Travato, 42 F.3d 1376 (Fed. Cir. 1994), op. withdrawn on reh'g, 60 F.3d 807 (1995)
Civil action under § 145 handled as Associate Solicitor:
· Joy Technologies Inc. v. Quigg, 12 U.S.P.Q.2d 1112 (D.D.C. 1989), summary judgment denied, 732 F. Supp. 227 (D.D.C. 1990), supplemental op., Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225 (D.D.C. 1990), aff'd, 959 F.2d 226 (Fed. Cir. 1992)
Administrative Procedure Act (APA) case handled as Associate Solicitor:
· Fressola v. Manbeck, 1995 WL 656874 (D.D.C. Mar. 30, 1995) (USPTO's single-sentence rule for claims does not violate APA)
Resources
News
Oblon, Spivak Welcomes Former APJ Lee E. Barrett
Thursday, August 5, 2010
Events
USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012
Monday, January 9, 2012