Where an order has been granted to stay a patent litigation pending the outcome of a reexamination of the patent-in-suit, there is little likelihood that patent owner will be able to successfully appeal the decision ordering the stay of litigation. Such orders are generally not appealable, because they are not considered final decisions. See Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983). There is an exception where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.” See Slip Track Sys., Inc. v. Metal-Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).
Federal courts have often found jurisdiction to review stays in favor of state court suits when the state court judgment would have a fully preclusive effect on the federal action or moot the federal action entirely.
See , e.g. , Cone , 460 U.S. at 10;
Terra Nova Ins. Co. v. 900 Bar, Inc. , 887 F.2d 1213, 1218-21 (3d Cir. 1989). Stays in favor of administrative proceedings are similarly reviewed on an “effectively out of court” standard.
See Gould , 705 F.2d at 1341
;
Hines v. D’Artois , 531 F.2d 726, 730-32 (5th Cir. 1976).
It is difficult to identify many circumstances in which an “effectively out of court” situation would be presented for substantive issues based on concurrent reexamination. Read the rest of this entry »
On March 23, 2010, Judge Timothy C. Batten Sr. of the U.S. District Court for the Northern District of Georgia refused to revisit his decision of February 22, 2010 to deny a stay of Optimum Processing Solutions, L.L.C. v. Advanced Micro Devices, Inc. et al. (Case No. 09-cv-01098) pending the outcome of reexamination of the patent-in-suit (U.S. Patent No. 5,115,497). The patent-in-suit entitled “OPTICALLY INTRACONNECTED COMPUTER EMPLOYING DYNAMICALLY RECONFIGURABLE HOLOGRAPHIC OPTICAL ELEMENT” issued May 19, 1992 and expired May 19, 2009. The stay was denied despite the fact that no depositions had been taken in the patent litigation and no claim construction order had issued.
On February 19, 2010, the USPTO ordered ex parte reexamination of claims 1-4, 11-12, 16-19 and 34-35 of the ‘497 patent based on a request filed by AMD. (Reexamination Control No. 90/010,783).
Since the ‘497 patent expired, no claim amendments can be made during the reexamination proceedings and claims will not be given their broadest reasonable interpretation (see our earlier discussion on the issue here). Rather much like what Judge Batten will do in his claim construction order, the USPTO will interpret the patent claims not only based on the words of the claims read in light of and consistent with supporting specification of the ‘497 patent, but also consider its prosecution history and any extrinisic evidence submitted in the form of expert declarations or affidavits as to the meanings of words in the claims, as to how they would have been understood by a person of ordinary skill in the technology of the patent at the time the invention was made.
–Pick a Winner–
The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.
§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent. In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent. Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts Read the rest of this entry »
Section 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription. The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.
If these so called technical amendments were enacted into law applicants could add or delete named inventors to correct an error in inventorship that was made with deceptive intent. That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor, Read the rest of this entry »
–Procedural Alchemy–
The general policy of the USPTO is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. MPEP § 2686.03. The reason for this policy is to permit timely resolution of both the reissue and the inter partes reexamination, to the extent possible, and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the inter partes reexamination proceeding or to stay one of the two.[1]
Where a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.985. See also MPEP § 1418. In addition, the patent owner should file in the inter partes reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.985 to notify the Office in the inter partes reexamination proceeding of the existence of the two concurrent proceedings.
The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally Read the rest of this entry »
One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution. Such inadvertant issues can currently serve to jeopordize an otherwise valid patent. With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.
For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent. The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ). If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices). Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent Read the rest of this entry »
On March 15, 2010, an expanded BPAI panel that included Chief APJ, Michael Fleming and Vice Chief APJ, Allen MacDonald rendered a decision on rehearing of an expired patent of the infamous Ronald A. Katz Technology Licensing L.P portfolio. The rehearing addressed the standard for claim construction in expired U.S. Patent No. 5,561,707. A copy of the decision is found (here).
The original BPAI decision contained a statement that, in construing the claims of an expired patent during a reexamination proceeding, “the claims will not be narrowed by interpretation not required by the claim language.” The expanded BPAI panel clarified the statement made in the original panel decision by stating that “[i]t does not say that the claim terms cannot be interpreted using different words or limit the sources of claim meaning.”
The expanded panel agreed that Read the rest of this entry »
On March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.
Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that 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 »
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.
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