Patents Post Grant Blog

Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com.  As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.  

In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed.

Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment.  This amendment was submitted to the USPTO in 2007.  It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right? 

Wrong

Yesterday the typical Read the rest of this entry »

Guest Post by Philippe Signore

“If I had more time, I would have written less.”  There is some question about who authored this famous quote, but one thing is sure: the folks drafting S515 didn’t do it.   Five years in the making, the pending patent legislation is getting longer and more complex with each iteration.  Last week, the Senate Judiciary committee released its latest version, which adds a number of new twists.  In particular, the damages provision, which takes up 15 lines under current law (35 USC 284), would now be governed by over 100 lines of statute!  Given that any single word of a statute can give rise to decades of interpreting jurisprudence (e.g., “process,” “printed publication,” “on sale” “obvious,” “reasonable royalty”), the entire 21^st century might be dedicated to interpreting the new statute, unless another reform is enacted before that.

So, what does the new version of S515 provide with respect to damages?  Read the rest of this entry »

With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding, Read the rest of this entry »

As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here).  In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.

 A.  Post-Grant Review

Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of  § 282 (b).  Post Grant Review may be initiated ONLY within Read the rest of this entry »

As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered Read the rest of this entry »

Two weeks ago, it was widely reported that the BPAI upheld the reexamination rejection of the broadest claim of Pfizer’s US Patent 6,469,012 relating to Viagra®. Lost in the outrage over the 7 year pendency of the reexamination proceedings was the degree to which the Pharma industry stacked the deck against Pfizer, and how special dispatch seemingly ends at appeal.

The reexamination of the ‘012 patent was kicked off by the USPTO in 2003, identifying four substantial new questions of patentability (SNQs).  It is worth noting that in 2003, there was no such thing as a Central Reexamination Unit (CRU).  Instead, this patent reexamination went to the patent examining corps.  As most practitioners are aware, while the patent examining corps certainly has the technical expertise to handle such issues, special dispatch was far from assured. This deficiency, in part, led to the creation of the CRU in 2005. The CRU implemented a coordinated management of the USPTO’s reexamination caseload, and staffed reexamination proceedings with teams of three experienced primary examiners.

In addition to the initiation of the Viagra® reexamination in this period of USPTO transition, the Pharma industry implemented a strategy of Read the rest of this entry »

Another week, another patent litigation stayed in a California court pending a concurrent USPTO  reexamination.  This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind. Com. De Equip. Medico (“GMReis”) over Synthes’ U.S. Patent No. 7,128,744 (“the ’744 patent”) covering locking bone plates used in surgery to secure fractured bones.  In his Order Judge Lorenz stated that “[t]o proceed with the case during [inter partes] re-examination [of the ’744 patent] would needlessly duplicate the effort of the USPTO and forgo the benefit of its expertise and analysis.”  He noted that “if the USPTO cancels the patent’s claims the issue of infringement will be moot.”  On the other hand, if “the USPTO reaffirms the patent, the court will have the benefit of the agency’s analysis of the same prior art that GMReis is relying on to challenge the patent’s validity.”  Because the dates for discovery, the Markman claim construction hearing and trial had yet to be set, the judge indicated that these factors weighed in favor of granting a stay of the litigation pending the outcome of the inter partes reexamination proceedings.  The judge was unimpressed by the undue prejudice argument raised by the patent owner, since in the three years that the litigation was pending, “Synthes had not requested a preliminary injunction.”

The Order illustrates the value of an early filed reexamination.  In this case, Smith & Nephew employed a common third party tactic of quickly filing an ex parte reexamination request at the outset of a dispute to get the reexamination going, followed up by a later filed inter partes reexamination request.  This one-two-punch of ex parte and inter partes requests allow the requestor to initiate reexamination quickly, without having to worry about the comprehensiveness of the ex parte request, prior art search, etc.  As the later filed inter partes request is subject to the “could have been raised” aspect of the 35 U.S.C. 315(c) estoppel provision, the later requests is prepared more carefully.

Smith & Nephew filed their ex parte reexamination proceeding (Control No. 90/009,377) on January 8, 2009.  On May 5, 2009 the inter partes request was filed (Control No. 95/000,465).  On July 14, 2009, the USPTO merged the proceedings.  On November 5, 2009, the USPTO issued a non-final Office Action rejecting all of the ’744 patent claims for obviousness over a number of printed publications.

Earlier this month we noted that with the health care legislation seemingly losing steam, that there appeared to be movement on patent reform; yesterday those  suspicions were confirmed.  Senator Patrick Leahy (D –Vt) indicated at an executive business meeting on Thursday that a compromise bill on patent reform would be forthcoming.  The detailed press release, along with a video of the meeting can be found here.

While details of the reported compromise are scant, it appears that USPTO Director Kappos, bar organizations, industry and several prominent senators have worked together to arrive at a new and improved S. 515.  It is expected that the details of the compromise bill will be released in the coming days.  In the meantime, if you want to become familiar with the history of legislation, provisions, and likely areas of compromise, see my colleague Philippe Signore’s paper on the subject here.

Likewise, I will be speaking on this topic along with Philippe this coming Monday at 4^th Annual Patent Law Institute NYC

Last week we noted the potential affect of Ex Parte Tanaka internal to the USPTO.  Tanaka was decided last December by the Board of Patent Appeals and Interferences (BPAI), holding that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. 

Not surprisingly, earlier this week the issue was taken to the Federal Circuit on behalf of Koyo Seiko Co. Ltd.   Stay tuned for further updates.

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York  this coming Monday (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 program on ”Increased Utilization of Inter Partes Reexamination with Concurrent Litigation” (4th Annual Patent Law institute).   Philippe Signore will be speaking this coming Monday on the proposed patent reform legislation, and Stephen Kunin will be speaking at the 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 (Chicago March 11th and 12th)