Patents Post Grant Blog

–A Tale of Two Statutes –

When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas.  In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows:  Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? ”

When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.

It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications.  Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]

In this regard, MPEP 2258 (II) notes that:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . .  (emphasis added)

The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with Read the rest of this entry »

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI programs on Strategic Use of Merged Proceedings Within the USPTO, as well as the increasing Utilization of Inter Partes Reexamination with Concurrent Litigation (Patent Law institute 4th Annual). Stephen Kunin will also be speaking at the New York and Chicago events on Inter Partes Reexamination Mechanics with Todd Baker.  More information on these programs is found below, hope to see you there!

4^th Annual Patent Law Institute NYC

Reissue & Reexamination Strategies and Tactics Concurrent with Litigation (NYC) February 11th-12th

Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)

Admissibility in Litigation?

As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.

Reexamination Evidence Used to Rebut Willfulness

Willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent” and the “objectively defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.”  In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  Thus in order for willful infringement to be found, the accused infringer must have known or should have known that the relevant patent was valid.  Willfulness is to be evaluated “under the totality of the circumstances.” Id. at 1369.  Thus, alleged infringers accused of willful infringement have asked the court to consider the existence of pending reexamination proceedings.  The theory asserted by alleged infringers is typically a variant of the following: where the PTO has granted a request for reexamination, and thus concluded that substantial questions of patentability exist, an alleged infringer could not have acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.”  In other words, where the PTO has called into question the validity of the patent by granting reexamination, any infringement thereafter could not have been willful. Read the rest of this entry »

Fashioning New and Improved Weapons?

Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts.  In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees.  At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.      

More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC.  In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid.  These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009.  To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).[1]

Why the inconsistency between the two government bodies?

In short, the standards of proof are different, as are the rules of claim interpretation.  In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity.  In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.[2]  

So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?  

It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status.  If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding.  If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on.   However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®. Read the rest of this entry »

Inter partes reexamination, has created new opportunities for the public to challenge the patentability of some or all claims of issued patents filed on or after November 29, 1999 and to actively participate at each stage in the reexamination proceedings.  Indeed, as noted yesterday, inter partes filings, especially those relating to copending district court litigation,  have surged over the past several years.  Yet, this new proceeding has become a lightning rod of criticism for how it is managed in the USPTO.  Whether by academic rant, or judicial admonishment, inter partes reexamination is largely ridiculed as ineffective and open-ended in time, taking many times on the order of 7 years to conclude.  Yet, the delay in concluding an inter partes reexamination is impacted by many factors, many of which are outside of the control of the USPTO. 

Read the rest of this entry »

–Concurrent Litigation a Driving Force–

The USPTO has released their year end statistics for ex parte and inter partes patent reexamination.  The ex parte statistics may be found here, the inter partes here.  Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the overall 2009 economy, or a shift toward inter partes proceedings.  Perhaps tellingly, the inter partes numbers continue to increase at a strong pace year over year. 

The statistics indicate that a whopping 68% of inter partes reexaminations are known to be in litigation (32% for ex parte). With the continued influx of inter partes reexaminations to the Office, one has to wonder how the USPTO will keep up with the demand.  Indeed, the Office is increasingly criticized with respect to the growing delays associated with inter partes reexamination.  

Tomorrow we will explore how the behavior of inter partes requestors virtually ensures PTO inefficiency, and how such behavior may be discouraged to streamline the proceeding….stay tuned.

Admissibility in Litigation?

 

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee. Read the rest of this entry »

On December 15, 2009, Chief Judge William K. Sessions III of the United States District Court for the District of Vermont denied a stay in the patent litigation between Synventive Molding Solutions, Inc. (“Synventive”) v. Husky Injection Molding Systems, Inc. (“Husky”), Case No. 2:08-cv-136. Husky had filed a motion to stay the patent litigation based on requests for reexamination of the three patents-in-suit. However, as of the time of Judge Sessions’ decision denying Husky’s motion to stay the litigation pending the outcome of the reexamination proceedings, the requests for reexamination has not yet received filing dates.

In deciding whether to grant Husky’s motion to stay the patent litigation, Judge Sessions considered whether (1) a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) a stay would simplify the issues in question and trial of the case; and (3) discovery is complete and whether a trial date has been set.

The judge held that actual prejudice to Synventive does not appear to be significant given the availability of money damages for past and ongoing infringement. In the ruling, the judge stated that “[r]eexamination will still leave this Court with triable issues however, even if the reexamination is granted and some claims are amended or canceled upon reexamination. Were the case to be stayed pending reexamination, in all likelihood the parties would require additional discovery on the issues remaining to be tried….Granting a stay would therefore substantially increase the total time necessary to resolve the litigation. The reexamination proceeding may or may not simplify the issues remaining for trial….The parties have engaged in unusually acrimonious discovery practice, which is now drawing to a close. A trial date has been set. The Court can perceive no advantage to delaying the resolution of this litigation.”

Weighing heavily in favor of denying the stay were the closeness of the trial, the potential two year delay in resolving the patentability issues in reexamination, and that the reexamination proceedings would not resolve all the issues in the litigation.

In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination.  In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple.  Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed.

What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent?  This may be the case, for example, Read the rest of this entry »

In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.”  Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears.  One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference.  In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application.  See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).  

A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit.  In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim Read the rest of this entry »