Patent Litigator Joins Post Grant Team
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner, Mr. Michael Kiklis to the Oblon Post Grant Patent Practice Group. Mike is a preeminent specialist in the software patent space having handled a significant amount of software related patent litigation over the years. Mike has litigated software patent issues against some of the largest computer companies in the world. One of his more well known representations is his landmark antitrust victory on behalf of Sun Microsystems against Microsoft, which settled for $1.95 billion.
Formerly a litigation partner in the DC office of Akin Gump, Mike brings significant technical insight and litigation experience to the Oblon Post Grant Team. Mike will be a key contributor to the Team as the traditional patent litigation model evolves to account for the new patent trial proceedings of the Patent Trial & Appeal Board (PTAB). Welcome Mike!
Improvements Speed Patent Reexamination Process
At last week’s AIPLA Spring Meeting, the Director of the Central Reexamination Unit (CRU), Ms. Remy Yucel provided an update on the continued efforts of the USPTO to refine the patent reexamination process. The Director reported that the time to printing of a reexamination certificate has improved, and that the Office is continuing to consider the stream line proposals published in the Spring of 2011 (at least as they relate to ex parte patent reexaminations). (presentation here)
Pursuant to the America Invents Act, all contested proceedings will now be the sole jurisdiction of the new Patent Trial & Appeal Board (PTAB). Thus, the CRU, will finish up its work on legacy inter partes reexaminations going forward, but will see no new requests for such after September 14th. After September 16th, the CRU will process requests for Supplemental Examination (SE). However, it remains to be seen whether or not SE will be embraced by stakeholders.
House Hearing Wednesday May 16th
Tomorrow, the House Judiciary Committee will hold a hearing on the Implementation of the America Invents Act at 10AM. The hearing will be webcast, information is found (here).
The agenda provides a list of speakers, some of which will discuss the implementation of the new post grant proceedings. It is also likely that the Director of the USPTO will report on the results of the Study on Genetic Testing (AIA, Sec. 27) and perhaps other studies commisioned by the Act. (e.g., Patent Litigation, AIA Sec. 34).
Reach of Estoppel More of a Concern After AIA
The application of statutory estoppel to patent challengers was a concept first introduced in 1999 with the advent of inter partes patent reexamination (IPX). Initially, many sensationalized the estoppel effect of IPX together with the unpredictability of the reexamination process as justification to avoid use of the new proceeding. Over the years, due to the consistent performance of the USPTO’s Central Reexamination Unit (CRU), and perhaps to a greater extent, the 5-7 year duration of a fully contested IPX, patent challengers realized the estoppel risk to be an insignificant factor for most patent disputes (since most conclude before estoppel can attach). For this reason, the estoppel mechanics as to real-parties-in-interest and privies were infrequently considered by the courts, or USPTO.
Going forward, estoppel may once again become a concern for patent challengers under the new proceedings of the America Invents Act (AIA).
Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP), all have their own estoppel provisions. In view of the fact that all of these proceedings are designed to end within 12 months, estoppel is now a more clear and present danger. As such, it is now more important than ever for patent challengers to understand the meaning of ”real party-in-interest” and “privies.” Read the rest of this entry »
BPAI Considering Expanding Per Curiam Decision Practices to Combat Backlog
At this week’s AIPLA Spring Meeting, Chief Judge Smith of the Board of Patent Appeals & Interferences (BPAI) provided an update on the Board’s staffing and productivity initiatives. As shown in his slides (here), the backlog of appeals continues to grow toward 30,000 cases.
As a result of the backlog, and the new trial mechanisms of the America Invents Act, the Board has increased hiring. Since hiring alone will not be enough to keep up with the workload, the Board is also contemplating expansion of the per curiam decision practice. Read the rest of this entry »
In re Youman Faults BPAI Recapture Analysis
Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).
As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.
The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.
In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (”overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test. Read the rest of this entry »
Patentable Subject Matter Challenge Advanced in Patent Reexamination
This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus. The decision held that certain patents of Prometheus Laboratories were directed to non-statutory subject matter. Specifically, the Court found the Prometheus patents, claiming methods of administering a blood test to calibrate necessary drug dosages in patients suffering from autoimmune diseases, to be directed to laws of nature.
The decision was an important one for the bio/pharma community, especially as it relates to the 101 analysis currently before the CAFC in the Myriad gene patent dispute.
However, when it comes to such patentable subject matter challenges under 35 U.S.C. § 101, there is currently no vehicle for a patent challenger to pursue such arguments before the USPTO. This is because patent reexamination is limited to patents and printed publications. Yet, challengers will occassionally test the bounds of the USPTO’s patience in this regard by infusing requests with extraneous commentary. Read the rest of this entry »
USPTO Program Ends June 16th
Some pre-grant news today….as detailed previously, the USPTO has launched a new, internal pilot program entitled “After Final Consideration Pilot” (AFCP). The program is designed to foster compact prosecution by encouraging examiner entry of an amendment submitted in response to a final rejection, in limited situations.
If you have submitted such a filing to the USPTO since March 26th, the examiner will determine whether he or she should take advantage of the additional examining time authorized by the pilot to consider the response. Examiners will use their professional judgment to decide whether the response can be fully considered, including any additional search required, within a three hour time limit in order to determine whether the application can be allowed. There is no need to file any special request for consideration of an amendment under this pilot program.
Unfortunately, this program will end on June 16th, (which seems rather short lived in my opinion to get meaningful data). Going forward, the effectiveness of the program will be evaluated relative to the number of RCE filings avoided. While the program certainly cannot hurt, the continued viability of the program is more likely a question of cost effectiveness.
Speaking of after final practice, there is an interesting study authored by Kip Werking (posted on IPWatchdog) that explains BPAI success rates for applicants are closer to 75% rather than the 33% reported by the USPTO. The study points out that, when taking into account appeals that are pulled back by the examiner prior to Board decision (i.e., reopening of prosecution after filing of an appeal brief), that such is tantamount to a Board reversal. ( study here)
Item of Information Limit Accounts for Practical Realities
Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. This mechanism, effective September 16, 2012 will be available to all issued patents.
In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of patentability (SNQs) detailing such potential defects, the Office will reconsider or correct such information; that is to say the Office will perform a “supplemental examination.” Once such issues are considered, any patent issuing as a result of the SE would be free of inequitable conduct charges based on the same issues considered in the SE.
In the proposed rules to implement SE, the USPTO has limited the number of “items of information” for presenting a SNQ to 10. Public comments directed to this implementation detail have been largely negative.
A few days back, the Director more or less made clear that this limitation will remain in the Final rules. Read the rest of this entry »
Transitional Program for Covered Business Method Patents (TPCBMP)
The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the USPTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” may be challenged under the same procedures and standards applied in Post Grant Review (PGR) proceedings. The TPCBMP will sunset 8 years from implementation, hence the “transitional” label.
The major differences between PGR and TPCBMP relate to patent eligibility and estoppel.
With respect to estoppel, PGR estoppel attaches to any ground that the petitioner raised, or reasonably could have raised during the PGR. On the other hand, TPCBMP estoppel is only limited to issues actually raised during the proceeding.
The legislation defines a “covered business method patent” in general terms, as follows:
a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
As can be appreciated, the definition of “covered business method patent” is of great interest to some of the leading U.S. innovators. Recently, the Senator (Schumer D-NY) that introduced the TPCBMP to the patent reform legislation urged the USPTO to adopt a very liberal definition of “covered business method patent.” Read the rest of this entry »
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