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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Interference’ Category

First Inventor to File vs. First to Invent

Posted On: Mar. 2, 2011   By: Scott A. McKeown
redherringPatent Reform & the Red Herring Patent Interference Argument

As the patent reform debate continues on the floor of the Senate, the expected battle against the so-called “first inventor to file” (FITF) began today. Senator Feinstein D-CA, broke from the party line and assailed the proposed FITF provision as inefficient, encouraging incomplete filings, and disadvantaging small inventors. Sen. Feinstein had an impressive understanding of these very complex issues.

In attempting to rebut Sen. Feinstein’s position, two arguments were consistently repeated. First, it was argued that the “rest of the world” had a first inventor to file system. Ironically, this argument was made by the same folks beating the “America is the greatest innovator in the world” drum.

The second argument, was more troubling to me as a practitioner. This argument, justified the change to a FITF system based upon extreme patent interference statistics. In my opinion, the patent interference argument is a complete red herring. Read the rest of this entry »

No Interference from USPTO Solicitors at the CAFC?

Posted On: Oct. 29, 2010   By: W. Todd Baker

220px-WingmanWhether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims.  In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).

Would Solicitor participation in these cases have protected the institutional interests of the BPAI?  The answer is not clear.  However, absent Solicitor participation, the BPAI’s record will be left to speak for itself. Read the rest of this entry »

CAFC Denies Outsourcing of Inventorship to Foreign Countries

Posted On: Oct. 15, 2010   By: W. Todd Baker
Topics: Interference

CG98On October 13th, the Federal Circuit held in Solvay v. Honeywell International that, in order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2), the prior invention must have been conceived in the United States. The precedential decision (here) relates to ozone friendly fluorocarbons commonly used in refrigeration and heat storage systems. At issue in the appeal was whether or not Honeywell’s reproduction of technology, conceived by a Russian contractor, invalidated Solvay’s patent claims under 102(g)(2).[1]

In reversing the district court’s finding of invalidity under 35 U.S.C § 102(g)(2), the CAFC concluded that Honeywell’s employees did not qualify as “another inventor” under section (g)(2) because (1) they were not involved in the conception of the technology and (2) those who had conceived the invention were outside of the United States.

102(g)(2) requires prior invention in the U.S. In contrast, 102(g)(1), which governs patent interferences, allows for prior invention in foreign countries as permitted by 35 U.S.C. § 104. So would there have been a different outcome given the facts reported in the decision if this dispute had occurred in a patent interference?

Read the rest of this entry »

What to do with an Interfering Patent in Patent Reexamination?

roadblockThis past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding. The decision, Ex parte Regents of the University of California (“Regents”) (decision here), affirmed-in-part the rejection of U.S. patent No. 5,916,912 in ex parte reexamination. 

In particular, the Board held that Regents could not antedate U.S. Patent No. 5,998,474 (“Cavazza”) because the ‘912 patent and Cavazza were claiming the same patentable invention. Applying, 37 C.F.R. 41.203(a), the Board reasoned that the two patents were directed to “the same patentable invention” since a claim of the Regents patent is obvious in view of a claim of Cavazza, and vice versa.

This leaves the Regents in a bind, aside from challenging the BPAI decision to the CAFC, how can an interfering patent applied in patent reexamination be overcome? Read the rest of this entry »

Interference Rule 41.200(b) Taken Out of Its Misery

Posted On: Apr. 16, 2010   By: W. Todd Baker
Topics: Interference

Cancelled -- Rule 41.200(b)

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. 


[1] 567 F.3d 1366 (Fed. Cir. 2009).

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

Appelate Review of Stays Pending Patent Reexamination?

objectWhere 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 »

S.515 Provisions for a Post Interference World

Posted On: Apr. 9, 2010   By: W. Todd Baker

the-end-is-near… 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 4th and 5th, 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 »

To Search or Not to Search (for prior art) When Contemplating Whether to Provoke an Interference

Posted On: Jan. 25, 2010   By: W. Todd Baker

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 »

“Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?

Posted On: Jan. 22, 2010   By: W. Todd Baker

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 applicationSee 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 »

Is the Declaration of an Interference Enough to Stay a District Court Litigation?

Posted On: Jan. 20, 2010   By: W. Todd Baker

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 »