Patents Post Grant Blog

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 »

With the Obama administration seemingly reigning in their health care reform ambitions, it may be that the never ending saga of Patent Reform may once again be percolating in Washington D.C.  President Obama’s recent comments on the value of a strong patent system and outdated USPTO practices, and increased USPTO budget seem to evidence a refocused agenda.  On the heels of the President’s comments, last Tuesday, a group of bipartisan House members issued a letter to the House leadership opposing the reform efforts, labeling the earlier bill passed by the 110th Congress as “misguided.”

The letter from representatives Don Manzullo (R-IL) Read the rest of this entry »

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI programs on Strategic Use of Merged Proceedings Within the USPTO, as well as the increasing Utilization of Inter Partes Reexamination with Concurrent Litigation (Patent Law institute 4th Annual). Stephen Kunin will also be speaking at the New York and Chicago events on Inter Partes Reexamination Mechanics with Todd Baker.  More information on these programs is found below, hope to see you there!

4^th Annual Patent Law Institute NYC

Reissue & Reexamination Strategies and Tactics Concurrent with Litigation (NYC) February 11th-12th

Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)

Fashioning New and Improved Weapons?

Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts.  In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees.  At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.      

More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC.  In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid.  These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009.  To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).[1]

Why the inconsistency between the two government bodies?

In short, the standards of proof are different, as are the rules of claim interpretation.  In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity.  In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.[2]  

So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?  

It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status.  If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding.  If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on.   However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®. Read the rest of this entry »

–Concurrent Litigation a Driving Force–

The USPTO has released their year end statistics for ex parte and inter partes patent reexamination.  The ex parte statistics may be found here, the inter partes here.  Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the overall 2009 economy, or a shift toward inter partes proceedings.  Perhaps tellingly, the inter partes numbers continue to increase at a strong pace year over year. 

The statistics indicate that a whopping 68% of inter partes reexaminations are known to be in litigation (32% for ex parte). With the continued influx of inter partes reexaminations to the Office, one has to wonder how the USPTO will keep up with the demand.  Indeed, the Office is increasingly criticized with respect to the growing delays associated with inter partes reexamination.  

Tomorrow we will explore how the behavior of inter partes requestors virtually ensures PTO inefficiency, and how such behavior may be discouraged to streamline the proceeding….stay tuned.

The seemingly never ending political battles relating to the pending patent reform legislation rage on, especially as they relate to the proposed post grant opposition and reexamination provisions.  

The current bills, H.R. 1260 and S 515, originated from legislative proposals from as far back as 2005.   S. 515 was reported out of the Senate Judiciary Committee on April 2, 2009, a committee report on this bill was issued on May 13, 2009. 

 Both of the bills include overlapping proposals, with respect to post grant oppositions and expanded inter partes reexamination.  Minor differences exist in the proposed bills, such as the availability of public use evidence to the expanded inter partes reexamination proposed, and the application of inter partes estoppel to ITC actions.

Lobbying

In January 2009, the Heritage Foundation released a white paper entitled: Promoting Innovation with Patent Reform: A Memo to President-elect Obama.  The paper opposed the legislative proposals regarding the expansion of reexamination and establishment of post-grant opposition.   Read the rest of this entry »

Welcome to PatentsPostGrant.com!

Post grant patent proceedings at the USPTO, such as ex parte and inter partes Reexamination are becoming increasingly favored tools to combat patents of questionable validity.  Likewise, some of these same Reexamination tools can also serve as mechanisms to defend and/or focus the scope of pioneering patent portfolios.

The emerging popularity of Reexamination stems from two factors, the first is the recent creation of the Central Reexamination Unit (CRU) within the USPTO.  While the use of reexamination by third party requesters was quite modest in the 1990s and the beginning of the 2000s, there has been a dramatic increase in the number of requests since that time.  The emerging popularity of reexamination stems in part from the recent creation of a Central Reexamination Unit (CRU) within the United States Patent and Trademark Office (USPTO).  CRU Examiners, all of whom are hand-picked experienced primary patent examiners who work in three person teams and handle only reexamination proceedings.  Thus, the quality of reexamined patents has increased based on the CRU team approach, and the speed of reexaminations has improved.

The second factor is the increased willingness of some Federal District Courts to stay a patent litigation in the face of an initiated Reexamination.  Read the rest of this entry »