On September 15, 2009, the Board of Patent Appeals and Interferences reversed Examiner's 103(a) rejection of claims asserted in U.S. Pat. No.  6,336,833.  The claims relate to "a watercraft ... having a throttle actuator which responds to manual steering control for causing a steerable propulsion unit to generate a propulsive force upon turning the steering control beyond a predetermined angular threshold." The patent is subject to concurrent litigation which has been stayed pending the outcome of the reexamination. Bombardier Recreational Products, Inc., et al. v. Kawasaki Heavy Industries, Ltd., Case No. 6:06-cv-00195-JA-JGG (M.D. Fla. 2006). Please see "Attacking a Patent in Reexamination for Lack of Written Description and Enablement?" by Stephen G. Kunin for a discussion of intervening art and the written description requirement. Reexamination Control 90/008,222
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This is part three of a three part a series of guest postings by Robert J. Spar, former Director of the Office of Patent Legal Administration. Bob will be one of featured faculty at PLI’s “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010” conference to be held in San Francisco, CA on January 11-12, 2010; New York, NY, on February 11-12, 2010 and Chicago, IL on March 11-12, 2010. OPLA has been instrumental in designing and implementing reexamination process improvements. Some examples of recent OPLA driven initiatives/changes include: 1. Request for XP or IP reexamination must meet all applicable statutory requirements to get a filing date. Thus, the patent owner, and the Office, are better able to evaluate the request to see if a substantial new question of patentability (an “SNQ”) has been raised when a filing date is given; 2. If reexamination is requested for less than all the patent claims, the USPTO determination on the request will generally review, on the merits, only the claims for which reexamination was requested. Further, during the examination stage, the Office will generally only examine those claims for which reexamination was requested, and a SNQ was raised; 3. Extensions of time were made more difficult to justify; and 4. Supplemental responses were prohibited without a showing of sufficient cause why entry should be permitted. These changes reduce the number of issues that examiners have to consider while performing the determination of reexamination requests, and while performing the examination in reexamination proceedings, and therefore enable more thorough, reliable and timely action taking. They also limit patent owners from taking actions to delay the reexamination process. It is clear that these changes will meaningfully help to reduce overall pendency of the reexamination process, which the Office is under a lot of pressure to do. I know that the CRU and OPLA together are considering other changes to further improve at least the timeliness of the reexamination process and I would not be surprised to see other such changes in the future. The CRU was established to provide thorough, consistent, reliable and timely evaluations of XP and IP reexamination proceedings. It is thought that the recent increases in the filings of XP and IP reexamination requests is due, at least in part, to an improved Office performance in handling reexamination proceedings by the CRU, which could not have been achieved without the strong support and assistance of the legal advisors in OPLA.
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Generally, a claim examined by the U.S.P.T.O is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears (hereinafter “broad reasonable standard”).  The rationale for applying the broad reasonable standard is that claims of applications and patents examined by the U.S.P.T.O can be amended. (MPEP § 2111)  There are, however, two important and little known exceptions when the broad reasonable standard is not applied by the U.S.P.T.O. One exception 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 applicationSee Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009). A second exception arises when an expired patent is in ex parte or inter partes reexamination.  In patent reexamination proceedings, reexamination of an expired patent is proper since the patent remains enforceable for six years after expiration (to collect past damages) and its claims cannot be amended once the patent expires.  MPEP § 2258(I)(G) provides the following guidance on claim interpretation during reexamination: claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)). In a reexamination proceeding involving claims of an expired patent, claim construction pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words of a claim "are generally given their ordinary and customary meaning" as understood by a person of ordinary skill in the art in question at the time of the invention) should be applied since the expired claim are not subject to amendment. The statutory presumption of validity, 35 U.S.C. 282, has no application in reexamination (In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985)). That a claim term can have two different meanings in reexamination dependent on whether the patent is expired can be of utmost importance.  Application of a Phillips type claim construction can be useful in avoiding clarifying amendments.  Such amendments, if deemed substantive in a subsequent litigation, would surrender at least past damages based upon intervening rights. Will the Central Reexamination Unit (“CRU”) apply the Phillips standard when interpreting claims of an expired patent? Two unpublished and non-precedential decisions by different panels of the Board of Patent Appeals and Interference (“Board”) shed some light on that question.  In Ex parte Personalized Media Communications, Inc., Appeals 2007-4044 and 2008-0334, Reexamination Control Nos. 90/006,697, 90/006,841, and 90/006,800 (BPAI, 2008), a panel of the Board concluded that claim language of an expired patent can be construed more narrowly than its ordinary and customary meaning only to the extent needed to resolve an ambiguity.  If the claim term is clear, the panel concluded that the broad reasonable standard generally applied by the U.S.P.T.O should be used.  See also Ex parte Peng Tan, Appeal 2006-3235, Reexamination Control No. 90/006,696 (BPAI, 2008)(affirmed by the Fed. Cir.). What should be the burden of proof standard in such circumstances?  Since claims of an expired patent in reexamination cannot be amended and thus enjoy a district court (i.e., Phillips) type of claim construction, should the CRU be required to make a clear and convincing rather than preponderance of the evidence showing when rejecting a claim of an expired patent in reexamination?  Cf. In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) where the  Federal Circuit concluded that the statutory presumption of validity, 35 U.S.C. § 282, has no application in reexamination. Curiously, however, the court in Etter relies upon the ability of patentees to amend claims in reexamination as justification to disregard the statutory presumption of validity provided by 35 U.S.C. § 282.   Is Etter controlling law regarding the proper treatment accorded expired patents for claim interpretation purposes in reexamination? Consider Etter (225 USPQ at 8) in this respect: In litigation, where a patentee cannot amend his claims, or add new claims, the presumption, and the rule of claim construction (claims shall be construed to save them if possible), have important roles to play. In reexamination, where claims can be amended and new claims added, and where no litigating adversary is present, those roles and their rationale simply vanish. As Etter clearly predated inter partes reexamination, and did not consider expired patents, this is an issue worth watching.  Practitioners should be well advised to consider these important distinctions when representing the patent owner in reexamination proceedings involving expired patents.
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This is part two of a three part a series of guest postings by Robert J. Spar, former Director of the Office of Patent Legal Administration.  Bob will be one of featured faculty at PLI’s “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010” conference to be held in San Francisco, CA on January 11-12, 2010; New York, NY, on February 11-12, 2010 and Chicago, IL on March 11-12, 2010. Current Cooperative Arrangement of CRU and OPLA. As previously noted, the CRU is now responsible for the determinations on, and the examinations of, all newly filed requests for XP and IP reexamination proceedings, including monitoring to ensure all actions are timely made, as well as the centralized processing of all reexamination related files and correspondence.  While OPLA was thus relieved of its responsibilities for processing reexamination papers, and for monitoring all the reexamination proceedings that were in the TCs, OPLA’s supporting role was not reduced.  Rather, it actually has increased in both volume, diversity and complexity. Today, OPLA legal advisors handle most of the complex petitions that are filed, and such petitions are not only increasing in number, they are increasing in complexity as one or both of the parties to reexamination proceedings, especially in IP reexamination, are relying on the petitions process to a greater and greater extent to try to game the reexamination process to their advantage.  For example, the unofficial number of petitions handled by OPLA has increased from 280+ in FY 2006, to 300+ in FY 2007, to 465+ in FY 2008, and finally to 570+ in 2009.  This is a very large number of petitions and they cannot be just handled in a pro forma manner.  OPLA now has to rely on 8 to 10 legal advisors to work on reexamination petitions in order to try to handle all petitions within a 2 month guideline, and in a consistent, thorough manner.  Further, efforts are being made in OPLA to handle some petitions, if at all possible, so as to not interfere with, or to minimally interfere with, the reexamination examination process. OPLA continues to train CRU examiners, including both new and existing examiners, and to provide advice and assistance on a regular basis to not only the examiners in the CRU (which have now increased to 55), but also to the SPE’s in the CRU, those examiners handling the remaining reexamination proceedings in the TCs (about 100), as well as to answer questions and queries from an increasingly interested patent bar. As the numbers of XP and IP reexamination proceedings has dramatically increased in recent years, the demands for assistance and advice have correspondingly increased.  For example, XP Requests have jumped from about 270/yr during the 3 year period from FY 2000 to FY 2002, to about 650 yr in FY 2009.  IP Requests have jumped even more dramatically, going from 126 in FY ’07, to 168 in FY ’08, to 258 in FY’09.  Thus, the workload has been significantly increasing, and is expected to continue to increase.  Further, the increasing complexity of such reexamination proceedings, especially the IP reexaminations, has made the examination task much more difficult. OPLA is located immediately adjacent to the CRU on the 7th floor of the Madison West office building in the USPTO complex in Alexandria, Virginia, and this arrangement has proven to be very fortuitous and beneficial.  Not only are the many OPLA legal advisors close by whenever CRU assistance is needed, but also to jointly work out the many process improvements and initiatives to streamline the process which have been implemented in the past few years.
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On December 7, 2009 at the IPO's annual PTO Day Conference at the Reagan International Trade Center, Gregory Morse will be providing an update on the activities of his Central Reexamination Unit of the USPTO. I will be moderating panel discussions on the Supreme Court arguments in Bilski v. Kappos and the PTO's interim guidelines on patent eligible subject matter featuring Ray Chen and Drew Hirshfeld from the USPTO. You can register at http://www.ipo.org/AM/Template.cfm?Section=Home&TEMPLATE=/CM/HTMLDisplay.cfm&CONTENTID=20759
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