Patents Post Grant Blog

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.

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 »

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 »

Two weeks ago, it was widely reported that the BPAI upheld the reexamination rejection of the broadest claim of Pfizer’s US Patent 6,469,012 relating to Viagra®. Lost in the outrage over the 7 year pendency of the reexamination proceedings was the degree to which the Pharma industry stacked the deck against Pfizer, and how special dispatch seemingly ends at appeal.

The reexamination of the ‘012 patent was kicked off by the USPTO in 2003, identifying four substantial new questions of patentability (SNQs).  It is worth noting that in 2003, there was no such thing as a Central Reexamination Unit (CRU).  Instead, this patent reexamination went to the patent examining corps.  As most practitioners are aware, while the patent examining corps certainly has the technical expertise to handle such issues, special dispatch was far from assured. This deficiency, in part, led to the creation of the CRU in 2005. The CRU implemented a coordinated management of the USPTO’s reexamination caseload, and staffed reexamination proceedings with teams of three experienced primary examiners.

In addition to the initiation of the Viagra® reexamination in this period of USPTO transition, the Pharma industry implemented a strategy of 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.

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York  this coming Monday (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 program on ”Increased Utilization of Inter Partes Reexamination with Concurrent Litigation” (4th Annual Patent Law institute).   Philippe Signore will be speaking this coming Monday on the proposed patent reform legislation, and Stephen Kunin will be speaking at the 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 (Chicago March 11th and 12th)

 

 

The Electronic Frontier Foundation (EFF) Case Study

On January 29, 2010 the USPTO ordered ex parte reexamination of claims 1-6 and 13-18 of C2 Communication Technologies’ U.S. Patent 6,243,373 (90/010,716) at the request of the EFF.  On the same day, USPTO ordered a second ex parte reexamination (90/009,637) of claims 1-24 of the ‘373 patent at the request of PaeTec Holdings Corp.^[1] 

The ‘373 patent is directed to a method and apparatus for implementing a computer network/internet telephone system (VoIP).  The patent has been the subject of litigation since 2006, when C2 filed patent infringement suits against AT&T, Inc. (AT&T), Verizon Communications, Inc. (Verizon), BellSouth Corp., Sprint Nextel Corp. (Sprint) and other telecommunications companies. In 2008, AT&T, Verizon and Sprint agreed to take licenses under the patent to settle their litigation. Qwest Communications International, Inc., Global Crossing, Ltd. and Level 3 Communications, Inc. in September 2008, also agreed to settlements and license agreements.

The factual background of this reexamination, concurrent litigation, and multiple reexamination requests, is quite common.  As such, I was especially shocked to see this fairly common occurrence  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.

 

–E.D. of Texas Defendants Seek to Ride Off Into the Sunset– 

The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation has proved effective in the E.D. of Texas sporadically at best; Judge Ward and Judge Davis in particular very rarely, if at all, stay an action in favor of a pending patent reexamination.  

Since In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), a motion to transfer to a more convenient venue from a Texas court has become a marginally effective defendant strategy.  Now, as a matter of course, defendants will seek transfer of a patent infringement case to a more “convenient” forum.  Of course, convenience is rarely a mere issue of geography, but rather a basis for moving the dispute to a less patent friendly forum. In the eyes of defendants, less patent friendly would describe practically any other forum. Yet, as noted in the chart below, infringement cases seeking transfer in 2008-2009[1] increasingly sought California as a destination of “convenience.” 

A closer look at the 2008-2009 cases however, may reveal more than just a simple transfer strategy, but a two-step, tactical dance. Read the rest of this entry »

As first reported by PatentsPostGrant.com in November 2009, the patent reexaminations of NTP vs. RIM infamy were soundly shot down by the BPAI.[1]  In November of 2009, the BPAI began issuing a series of decisions affirming the rejections of the five NTP patents. 

5,436,960 BPAI reexamination opinion (link)
5,819,172 BPAI reexamination opinion (link)
6,317,592 BPAI reexamination opinion (link) 
6,067,451 BPAI reexamination opinion (link)
5,625,670 BPAI reexamination opinion (90/007,723)

As expected, in December of 2009, NTP requested the BPAI rehear arguments in these cases.  Earlier this month, the BPAI, in tersely worded responses, denied rehearing in the ’592 ‘172, and ‘960 patents.  As the issues in the ‘670 and ‘451 patent are common, namely, consideration of certain declaration and the public availability of certain prior art, it is expected that the remaining two denials will follow shortly. Next stop for NTP is the Federal Circuit. 

The Federal Circuit will be quite busy with NTP in the coming months.  In addition to the five patents noted above, NTP has two additional appeals from the BPAI headed to the court. 

5,438,611 BPAI reexamination opinion (link) 
-(CAFC appeal noticed 1/26/10)
5,479,472 BPAI reexamination opinion (link) 
-(Rehearing denied 2/5/10)

NTP patent, 5,438,611 appears to be out in front of the pack of (7) appeals, with the first formal CAFC appeal notice filed this past January. The ‘611 Patent, and NTP patent 5,479,472 were asserted against Sprint, T-Mobile, AT&T and Palm, in 2006.  As with the five patents above, the BPAI mostly affirmed the rejections applied in reexamination. 

Stay tuned.

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[1] Rejection of all claims were affirmed in 6,317,592, 5,819,172, and 6,067,451; Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM)

As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis.  For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims.  However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic. 

In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed. 

For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.  Read the rest of this entry »