This is part one 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. Summary: In the USPTO (“the Office”), the Office of Patent Legal Administration (OPLA) works very closely with the Central Reexamination Unit (CRU) on legal, procedural and policy issues related to reexaminations; their roles being different but complementary. The CRU has a separate technical support staff which performs all the processing functions for reexamination proceedings, and the CRU primary examiners and managers perform the determinations and examinations of the reexamination proceedings. The OPLA legal advisors, on the other hand, decide most of the complex reexamination petitions, regularly assist CRU managers and examiners, Office management, and the public on reexamination related issues, involving legal, procedural, practice and policy matters and, with CRU input, usually handle reexamination practice changes and policy initiatives. The division of responsibilities between the CRU and OPLA, and the close working relationship between the two organizations, works very well, and the arrangement is a significant improvement over the way reexamination cases were handled by the Office since 1981, when ex parte reexamination proceedings were established. Background: The Central Examination Unit (CRU) was established in the summer of 2005 to essentially handle the examination of all new Ex Parte (XP) and Inter Partes (IP) reexamination proceedings. Prior to the establishment of the CRU, examiners in the Technology Centers (TCs) handled both XP and IP reexamination proceedings. Different examiners, i.e., not the original examiners who handled the prosecution of the application that matured into the patent - were assigned to handle the reexamination proceedings. While these “different” examiners were knowledgeable in the classified technology area involved in the reexamination, they had to make determinations on the reexamination requests and, if reexamination was ordered, handle the reexamination proceedings along with all of the other regular non-provisional and reissue applications in their dockets. The examiners did not get any production credits for reexamination actions, or for learning the specialized reexamination procedures and practices; rather they got “other” or “non-examining” time for handling the reexamination proceedings, although such “other” or “non-examining” time was subject to approval by their SPE, which sometimes was limited. While the “other” or “non-examining” time arrangement should have been attractive enough for the examiner to spend whatever time was needed to properly and timely handle the reexamination proceeding, in reality, it was not! The conflicts of priorities on managing cases in their dockets, including meeting their individual examiner production and timeliness goals, and the “other” time limits imposed by some SPEs, often led to some reexamination proceedings being delayed. Many reexamination proceedings were not handled with “special dispatch,” nor with the thoroughness and proficiency that their special status deserved. OPLA had the responsibility for monitoring reexamination proceedings throughout the Patent Examining Corps so that the initial determination would always be timely handled, and for providing advice and assistance as may be needed. The examiners handling the reexamination proceedings, however, did not report to OPLA, so OPLA’s urging of timely, high quality work was often ineffectual. The results of such a system was that many reexamination proceedings were not timely treated, nor was the level of examination of all reexamination proceedings consistently reliable, leading to justifiable complaints about the lack of “special dispatch,” and reliability. Prior to the establishment of the CRU, and very much like they do today, the OPLA legal advisors decided most reexamination petitions, regularly provided advice and assistance to the Patent Examining Corps’ managers and examiners, upper Office management, and the public on reexamination processing, legal, policy and practice issues, and handled reexamination practice changes and policy initiatives. OPLA had a limited technical support processing unit, also known as the CRU, which performed most of the administrative processing and handling of reexamination proceedings in a centralized manner, although each Technology Center (a “TC’) also performed some processing for their own reexamination proceedings.
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This Post is the beginning of bi-weekly series geared toward post grant practitioners, grouped under the heading “Patent Praxis Changes made to patent claims in reexamination must comport with 35 U.S.C. § 305. Perhaps the most well known prohibition of this statute is that claims cannot be broadened during reexamination. This statutory prohibition should apply whether the amended claim or new claim is introduced by the patent owner via amendment, or by the patent examiner through an Examiner’s Amendment. The latter situation was addressed by the Federal Circuit last year in Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir. 2008). During a patent infringement suit brought by Predicate Logic against Distributive Software (Distributive), Distributive requested reexamination of the patent-in-suit, identified as the ’798 Patent. The ‘798 Patent is directed to a universal data measurement, analysis and control method used in software development. At the close of the reexamination, an Examiner’s Amendment was entered to place the reexamination proceedings in condition for issuance of a Notice of Intent to Issue a Reexamination Certificate (NIRC). Specifically, independent claim 1 of the ‘798 Patent was amended by the examiner to change “instantiating said at least one index” to -instantiating at least one said index-. Additionally, claim 1 was further amended to divide a single instantiating step into “first instantiating” and “second instantiating” steps. The Federal Circuit reversed a district court decision that held the ‘798 Patent claims invalid for impermissible broadening during reexamination as a result of the Examiner's Amendment. The Federal Circuit found that the amendment changing “said at least one index” to -at least one said index- did not broaden the scope of claim 1. It reasoned that it could not conceive of any process that would infringe amended claim 1 without infringing original claim 1. As to the substitution of two instantiating steps for one, the court held that the original claim, when properly interpreted, required two instantiation steps and, consequently, the substitution did not result in a substantive change to claim 1. Ergo, no intervening rights under 35 U.S.C. § 307 would obtain. The Federal Circuit was not pleased with the reexamination record presented; admonishing both the patent owner and the USPTO for failing to create an adequate prosecution history to fulfill the public notice function of patents. This case demonstrates that patent owners are well advised to submit Interview Summary Statements (37 CFR § 1.560(b)) following approval of the Examiner’s Amendment. Of course, such statements are required in reexamination proceedings for substantive interview discussions, however, as even cosmetic issues will be subject to attack in any subsequent litigation, it is best to err on the side of caution when summarizing the content of an interview in a reexamination proceeding.
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By Scott A. McKeown
| November 24, 2009
The seemingly never ending political battles relating to the pending patent reform legislation rage on, especially as they relate to the proposed post grant opposition and reexamination provisions.  

The current bills, H.R. 1260 and S 515, originated from legislative proposals from as far back as 2005.   S. 515 was reported out of the Senate Judiciary Committee on April 2, 2009, a committee report on this bill was issued on May 13, 2009. 

 Both of the bills include overlapping proposals, with respect to post grant oppositions and expanded inter partes reexamination.  Minor differences exist in the proposed bills, such as the availability of public use evidence to the expanded inter partes reexamination proposed, and the application of inter partes estoppel to ITC actions.

Lobbying



In January 2009, the Heritage Foundation released a white paper entitled: Promoting Innovation with Patent Reform: A Memo to President-elect Obama.  The paper opposed the legislative proposals regarding the expansion of reexamination and establishment of post-grant opposition.  

In July of 2009, a report of economist Professor Scott Shane Ph.D. was provided at the request of Jeff Sessions, the ranking Republican on the Senate Judiciary Committee, regarding the perceived impact of post grant opposition on the patent system.  The report was overwhelmingly negative, noting that the proposed opposition system would achieve none of the goals it was designed to accomplish and would, among other things, increase the length of patent pendency, increase the cost of validity disputes, decrease R&D efforts and disadvantage universities and small organizations.  Some have speculated that Senator Sessions is an ally of the anti-reform lobby and requested this information with a strong idea of the answer (previously the same economist had attacked the infringement damages aspect of the same legislation).

A.  Administration

On October 5, 2009, the Obama administration released, via a letter from Commerce Secretary Gary Locke to the Senator Sessions, the administration's positions on S. 515.  In the letter, the Administration took some notable positions not previously considered.

Of particular relevance to post grant proceedings, Secretary Locke stated:

Post-Grant Review and Other Quality Enhancements

The Administration supports the establishment of a phased-in post-grant review procedure, as well as phased-in changes to inter partes reexamination, to reduce costs and increase certainty by offering a lower-cost and faster alternative to litigation as a means of reviewing questions of patent validity. Such a procedure also would provide a check on patent examination, ultimately resulting in higher-quality patents. It is important that post-grant review procedures be designed to prevent delay and abusive challenges.

A post-grant review procedure like that envisioned by S. 515 would improve the quality of patents and lead to significant savings by avoiding unnecessary litigation. At the same time, any review procedure would increase USPTO's costs. The USPTO would benefit from the flexibility to set or adjust fees to recover the cost of doing the applicable work. Depending on the scope and timing of post-grant review, intermediate steps to ensure adequate resources may need to be explored until a new fee schedule can take effect. We would be pleased to work with Congress to develop procedures to meet the above goals or to provide technical drafting assistance on these provisions.

With this in mind, it is worth looking at S. 515 to see what post-grant proceedings the Obama Administration supports.  Section 5 of S. 515 as reported by committee on April 2, 2009, can be summarized as follows:

  • Reexamination Proceedings: Inter partes reexaminations would begin to look more like court cases and would be heard by administrative patent judges.  The Bill would eliminate the “or could have raised” estoppel.  The Bill would also clarify that parties would be estopped from filing inter partes reexamination requests after a district court judgment. 



  • Additional Post Grant Review: Within (i) 12 months of issuance of a patent or reissue patent or (ii) at the consent of the patent owner, a third party can file a cancellation petition based on virtually any ground of invalidity (rather than simply prior art). The only enumerated exclusion is invalidity based on failure to disclose the best mode as required by 35 U.S.C. §112. Post grant review would be precluded between the same cancellation petitioner and the same patent. The post grant reviews would also be conducted by the administrative patent judges.


B.  USPTO

In a press conference conducted on October 6, 2009, Director Kappos outlined the position of the USPTO relative to the legislation.  The Director noted that 12 months needed for rulemaking relating to Post-grant review.  After rulemaking, the implementation would be gradual, over a period of an additional 4 years, to allow PTO to prepare/staff for such proceedings. 

Current State of the Legislation



            Upon learning of Senator Locke’s letter, Senator Patrick Leahy (D-Vermont) issued the following statement:

The administration’s letter of support for the needed provisions in the Patent Reform Act reinforces the urgent need to enact this legislation.  It has been more than 50 years since Congress passed meaningful reforms to our nation’s patent system, and it is wrought with inefficiencies.  I have been working with the bill’s cosponsors, interested Senators, and the administration to reach consensus on this important legislation.  I particularly appreciate the commitment of Secretary Locke and Under Secretary Kappos to this legislation.  Now that the administration has indicated its support for the Patent Reform Act, I look forward to working with Majority Leader Reid to schedule Senate debate before the end of the year.

Shortly thereafter, 12 Republican Senators issued a letter  to Reid and to Minority Leader Mitch Connel (R-Kentucky) stating that the Senate bill “needs additional work before it is brought to the floor….the measure includes new and expanded mechanisms for the administrative reexamination of patents.  These so-called post-grant review provisions, as currently crafted, are quite problematic” 

Looking Down the Road



The only conclusion that can be drawn from recent developments is that the reexamination and post grant aspects of the reform legislation, along with other provisions relating to damages and inequitable conduct, are still drawing significant attention from lobbyists.  While the Administration is hopeful to move this bill to a conclusion by year end, in view of the battles looming on health care, one can only conclude that patent reform has once again lost momentum.
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By Scott A. McKeown
| November 23, 2009

 



Is it Possible to Comply with Larson Manufacturing?


Two weeks ago, we discussed the merger of concurrent post grant proceedings relating to the same patent at the USPTO.  In addition to concurrent proceedings of a same patent, it is also quite common for entire portfolios of a Patent Owner to be subject to reexamination.  In such cases, the reexamination of different patents (including direct continuations of one another) are not merged.  Likewise, there may also be ongoing continuation patent application examination (i.e., patent applications claiming subject matter directed to the same invention in applicant’s earlier filed patent and meeting the conditions of section 120 of the patent statutes) being examined concurrently with the parent patent in reexamination.  However, reexamination proceedings are not merged with non-reissue application examination.


In such concurrent proceeding situations, what are the obligations of the Patent Owner in satisfying the duties of disclosure, candor and good faith?


The later situation noted above was very recently analyzed in Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir 2009).  In Larson, the court found that certain Office Actions in an ongoing continuation patent application examination, which were not cited during a concurrently prosecuted reexamination of a related patent, were material information required to be cited in the reexamination proceeding.  The Federal Circuit remanded the case for a determination on intent before arriving at a conclusion of whether inequitable conduct was committed by the attorney representing the patent owner in the reexamination proceedings.


In arriving at the determination of materiality, the court cited the Examiner of the continuation application’s opinions in the Office Actions with respect to the applicability of the prior art common to both proceedings as being information that was inconsistent with or refuted the position that the patent owner was arguing for the patentability of substantially similar claims in the reexamination proceedings, relying upon the holding of Dayco Products See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003) (contrary decision of another examiner reviewing substantially similar claims is 'material'); See Also MPEP 2004 (note 9).


Based on the Larson holding, it is clear that the lack of citation of Office Actions of a related patent application examination in a reexamination proceeding may satisfy the materiality requirement of an inequitable conduct allegation.  When handling a reexamination proceeding for a patent owner, the obvious solution to this problem is to provide the Office Actions of pending continuation patent applications to the Office.  Yet, in 2008, prior to the Larson holding, MPEP § 2282 (for ex parte reexaminations) and MPEP § 2686 (for inter partes reexamination) were amended to provide apparently contradictory guidance:


. . .It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. (emphasis added)


Based on this language, the Office has published guidance, prior to Larson, that is now inconsistent with the direction provided by the Federal Circuit.  The Larson holding did not address whether mere citation of the continuation application by patent application number and status would have sufficed.  Yet, in view of Dayco, it is likely that the inequitable conduct charge would have been made by the accused infringer nevertheless.  As such, the current language of MPEP § 2282/2686 appears to place practitioners in an ethical quandary when trying to comply with the duty of disclosure and the conditions set forth in this MPEP section.


Part II of this series will be presented next week and analyze Third Party Considerations in view of § 2282/2686, namely, the evolution of these sections in view of abusive third party tactics.


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By Scott A. McKeown
| November 20, 2009
Despite the $612.5 million patent infringement settlement between NTP and RIM in 2006, there have remained ongoing reexaminations making their way through the reexamination and appeal process at the USPTO.  On November 10, The Board of Patent Appeals and Interferences (BPAI) affirmed final rejections relating to two reexaminations of NTP (U.S. Patent Nos. 5,819,172 and 6,317,592). 

As brief background, the reexamination of the NTP patents began during the litigation between NTP v. RIM.  The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation.  However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM's business in the U.S via court imposed injunction. 

The BPAI decisions are uncharacteristically voluminous, spanning some 300 pages.  The BPAI soundly rejected several NTP positions, and was able to affirm the rejection of the claims in both NTP patents on appeal.  The remaining patents of the RIM case are also on appeal, with decisions very likely forthcoming in the near term (U.S. Patent Nos. 6,067,451; 5,625,670; and 5,436,960).
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