Patents Post Grant Blog

NTP Patent Reexaminations & Key Patent Reissue Cases

With not much going on between holidays, a look forward to 2011 shows some interesting post grant issues teed up at the CAFC.

Oral arguments have been scheduled for In re Tanaka (January 10), In re NTP (February 10), and In re Mostafazadeh (February 11). (CAFC schedule here)

As a reminder In re Tanaka, (on appeal from the BPAI decision of last December) will explore whether or not a reissue application is proper where the only defect identified in the issued patent is the failure to present additional dependent claims.  At the BPAI, the Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.

Of perhaps greater interest in the patent reissue area is In re Mostafazadeh. This case will explore the boundaries of the recapture rule as it relates to broadening reissues. Specifically, the CAFC will have an opportunity to provide feedback to the USPTO on the continued viability of Ex parte Eggert 67 USPQ2d 1716 (BPAI 2003) in view of North Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). The USPTO has taken the position that Eggert is no longer binding on the Office. As a result, the Office has considered recapture to foreclose presentation of an intermediate claim scope in patent reissue where a broader claim limitation was surrendered in original prosecution.

Finally, the NTP patent reexaminations of NTP v. RIM fame finally get their day in court. Read the rest of this entry »