Patents Post Grant Blog

A bit of self promotion on this otherwise uneventful Monday….

Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is proud to announce that Lee E. Barrett has joined the firm as Of Counsel. Mr. Barrett served in several roles during his distinguished 32-year career with the U.S. Patent and Trademark Office (USPTO), most recently as an Administrative Patent Judge (APJ) with the Board of Patent Appeals and Interferences. For 16 years, he was responsible for hearing and deciding appeals from decisions of examiners in applications for patents, for reissue of patents, and in ex parte and inter partes reexamination proceedings.

Of the many notable reported decisions for which Mr. Barrett authored the Board opinion, some of the more high-profile ones were: Ex parte Bilski, Appeal 2002 2257, Application 08/833,892 (BPAI 2006) (affirming a rejection under 35 U.S.C. § 101 of a business method of hedging), aff’d, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d, Bilski v. Kappos, 561 U.S., 130 S. Ct. 3218 (2010); Ex parte Translogic Tech., Inc., Appeal 2005-1050, Reexamination Control Nos. 90/006,392 et al. (BPAI 2005) (affirming obviousness rejection to serial multiplexer in reexamination after district court jury trial holding the patent valid and infringed), aff’d, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007); and Ex parte Reiffin, Appeal 2007-2127, Reexamination Control No. 90/006,621 (BPAI 2007) (affirming rejection in reexamination based on lack of written description for “multithreading” and rejections based on anticipation and obviousness), aff’d, In re Reiffin, 340 Fed. Appx. 651 (Fed. Cir. 2009) (nonprecedential).

Lee Barrett will serve as an appeal specialist for the Oblon Spivak Reexamination & Reissue Practice Group.

This post has been corrected. An earlier version indicated an inaccurate filing rate that was based on calendar year rather than fiscal year . 

Yesterday, the USPTO released ex parte and inter partes reexamination statistics for the 1st Qtr of 2010. 2010 results to date show 126 inter partes reexamination filings, this number is equivalent to the total of all such requests filed in 2007.  

The operational statistics show the USPTO maintaining or exceeding the 2009 timing with respect to processing durations, with some commendable improvements in several categories.

With roughly 70% of inter partes reexamination filings identified as relating to a concurrent litigation (as compared to 30% for ex parte), for those entities taking advantage of an early filed inter partes reexamination, Congress and the USPTO have seemingly delivered on providing a viable alternative to patent litigation. Of course the CRU will need to continue to effeciently handle the growth in demand. Likewise, the Office may soon have the rug being pulled out from under them should patent reform come to pass, effectively transferring inter partes proceedings to the Board.

Last Friday the USPTO issued a Notice of Intent to Issue a Reexamination Certificate (NIRC) for U.S. Patent 4,847,265, directed to the well known blood thinner Plavix.®  The Plavix Patent was challenged by Apotex Inc, a Canadian manufacturer of a generic version of the drug.  

Apotex was unsuccessful in their challenge of the patent in district court, resulting in a court injunction against Apotex’s sale of a generic Plavix until after the patent expires. The reexamination was an attempt to dislodge the injunction prior to expiration of the patent. As a result of the successfully concluded reexamination, it appears Apotex will just have to wait for expiration (2012).

Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over).  Until we can figure out a way to correct the calculation, here are the top 5 postings for February-March 2010.

1. S.515 Reloaded

2. S.515 Post Grant Review

3. Hobbits & Wizards (Amazon 1-click reexamination)

4. Design Patent Reexaminations

5. The New Texas Two Step

–Guest Posting–

Mr. Raymond Mercado is a doctoral student in political science at Duke University

The Use and Abuse of Patent Reexamination

The presence of a threshold requirement (the “substantial new question of patentability” or “SNQ”) intended to protect patent holders from unwarranted reexamination proceedings reflects Congressional recognition that reexamination—like the patent application process—is susceptible to fraud and other misconduct.  Yet, whereas the literature and caselaw dealing with inequitable conduct by patentees is vast, there has been surprisingly little exploration of misconduct on the part of reexamination requesters.  My paper, The Use and Abuse of Patent Reexamination, attempts to fill this gap by examining the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders.

Suppose that a third-party requester were to fabricate or mischaracterize prior art, for example by misrepresenting the publication date of an obscure reference, deliberately mistranslating a foreign reference, altering the drawings and figures, or simply by proffering an elaborate but objectively unreasonable interpretation of the prior art.  Read the rest of this entry »

Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com.  As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.  

In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed patentable over the submitted art of the request.

Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment.  This amendment was submitted to the USPTO in 2007.  It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right? 

Wrong

Yesterday the typical Read the rest of this entry »

As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered Read the rest of this entry »

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features.  Design patent are defined in scope by the content of the drawings  as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.

What Exactly is a Substantial New Question of Patentability Anyway?

As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent.  Certainly there are numerous grounds to challenge a patent in a Federal District Court.  However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO.  The appropriate subset is explicitly identified by the reexamination statutes.  Simply stated, proper SNQs must be based on patents and/or printed publications only.  So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.

For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640

In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests.  Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office? Read the rest of this entry »

Guest Posting by Scott McBride of McAndrews Held & Malloy [1] 

Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a Patent Office reexamination.  Moreover, the decision to stay litigation is generally discretionary.  Decisions granting stays of patent litigation are typically reviewed under an abuse of discretion standard.  Such decisions can, in certain circumstances, be quite difficult to reverse on appeal.  Although a patent owner has a statutory right under 35 U.S.C. § 318 to seek a stay of patent litigation pending the outcome of an inter partes reexamination proceeding, such requests can be denied if the judge does not believe that a stay would serve the interests of justice. 

Factors generally considered by district court judges when ruling on motions to stay include whether (1) a stay will unduly prejudice, or present a clear tactical disadvantage to, the nonmoving party; (2) a stay will simplify the issues and trial of the case; and (3) discovery is complete and a trial date has been set.  In ITC proceedings, Administrative Law Judges also consider the stage of the reexamination proceedings, efficient use of the Commission’s resources, and alternative remedies available in federal court.

Prejudice

Delay arguably should not be a dispositive issue, Read the rest of this entry »