Patents Post Grant Blog

The USPTO has announced that 37 C.F.R. 41.200(b) is no longer viable in light of the  Federal Circuit’s Agilent Technologies, Inc. v. Affymetrix[1] decision, and has thus cancelled the rule. 

As discussed in earlier posts commenting on the Agilent and Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company[2] decisions, the Federal Circuit has concluded that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim should be interpreted in light of the specification of the targeted patent or application.  In contrast, Rule 41.200(b) required that a claim in interference be given its broadest reasonable construction in light of the specification in which it appears.

With Rule 41.200(b) taken out of its misery, one has to wonder what guidance examiners will be given when examining claims “copied” to provoke an interference.  Will examiners be instructed to apply one claim construction when considering written description and another claim construction when applying prior art to the same “copied” claims?  Will the MPEP be updated? 

If nothing else, the PTO’s decision to cancel Rule 41.200(b) in response to Agilent reinforces the prevailing opinion that interference practice is arcane. 

[2] 590 F3d 1326 (Fed. Cir. 2010).

… or is it?  Rumors of the demise of interferences via patent reform have been greatly exaggerated for years.  Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best.  In any event, we continue our review of S.515 provisions related to post grant matters.  On March 4^th and 5^th, we outlined the provisions in S.515 which would change reexamination and implement a new Post-Grant Review revocation mechanism, respectively.  Today, we discuss what little of substantive interference practice[1] will remain if S.515 is enacted — namely, derivation proceedings.[2] 

Currently, derivation cases are a species or type of interference decided by the Board of Patent Appeals and Interferences (“BPAI”).  In an interference proceeding at the BPAI, derivation is proven by establishing prior conception of the interfering subject matter and communication of the conception to the opposing party. 

Examiners rarely, if ever, suggest an interference sua sponte.   Consequently, in the vast majority of cases, an applicant wishing to initiate a derivation proceeding is required to suggest an interference pursuant to 37 C.F.R. § 41.202.  The suggestion of an interference is initially considered by an examiner, who is instructed by the MPEP not to even consider the suggestion of interference until after he or she has decided that the targeting applicant’s claims are in condition for allowance, but for the existence of the targeted application or patent.  Therein, lies the rub.  As stated in MPEP Read the rest of this entry »

The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:

In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended.  {Emphasis added.}

However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner? Read the rest of this entry »

All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan.  When is it OK to take a mulligan via reissue?  The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997.  As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:

(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.  {Emphasis added.}

You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision Read the rest of this entry »

Ex Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), held 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.  Although this decision is seemingly straight forward on its face, Tanaka may cause a significant shift in the workload internal to the USPTO.

With pendency of patent applications increasing and a growing inventory of applications awaiting appeal, a cynic would argue that Tanaka is a transparent attempt by the Board of Patent Appeals and Interferences (“BPAI”) to reduce the number of pending reissue applications awaiting examination, and/or to short circuit applicant efforts to use patent reissue as a substitute for failing to keep a continuation application pending.  Be that as it may be, an unintended consequence of Tanaka will likely be Read the rest of this entry »

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 »

In a growing trend, district courts are using their discretion to deny motions to stay patent infringement litigation in light of concurrent proceedings at the USPTO.  In an earlier post, we commented on the Northern District of California’s deviation from that trend.  In Advanced Analogic Technologies, Inc. v. Kinetic Technolgies, Inc., the concurrent proceeding was an inter partes reexam.  In LG Electronics USA Inc. et al (“LG”) v. Whirlpool Corporation (“Whirlpool”) (Case No. 1-08-cv-00234), the defendant’s motion to stay was denied consistent with the trend to deny such motions and the concurrent proceeding was an interference.

Judge Gregory M. Sleet of the District Court of Delaware denied Whirlpool’s motion to stay pending the outcome of an interference involving LG’s patents-in-suit.  The patents-in-suit are Read the rest of this entry »

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 application.  See 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.