Patents Post Grant Blog

Disclaimer Results in Reversal of $56 Million Dollar Damage Award

As previously discussed, the CAFC has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. The Court will reconsider whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by operation of prosecution disclaimer on the part of the Patentee. (earlier post here)

Interestingly, last week the Court considered a somewhat similar circumstance of claims that were confirmed in patent reexamination without amendment in Krippelz v. Ford Motor Company (here). Read the rest of this entry »

Claim Changes in Patent Reexamination & Reexamination Certificates

When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent reexamination as a cost effective mechanism to dissolve the dispute.

In many patent disputes, patent reexamination is conducted in parallel to a district court or ITC proceeding. Of course, as the reexamination proceeding advances, the reexamination prosecution history creates new defensive opportunities such as, additional prosecution history disclaimer and/or estoppel arguments; enhanced, or additional  inequitable conduct positions; and new non-infringement arguments.

Claim changes and/or cancellation are a boon to defendants as potentially mooting current infringement contentions or at least creating an intervening rights defense.  Yet, it is important to keep in mind that such claim changes are not effective until the proceeding is concluded. Read the rest of this entry »

Parallel Patent Reexamination Qualifies as Newly Discovered Evidence Under Fed. R. Civ. P. 60(b)

It is well established that the USPTO utilizes different standards of evidence and claim interpretation in patent reexamination. Likewise, there is no presumption of validity in patent reexamination. For this reason, district court/ITC claim construction findings (i.e., Markman Orders) are not binding on the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Yet, the findings of the USPTO with regard to claim construction can have significant impact on the court rulings.

For example, this past January, in St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential), the CAFC reversed a lower court claim construction ruling, based in part, on the findings of USPTO examiners in patent reexamination, Read the rest of this entry »

BPAI Definition of Email Found Unreasonable by CAFC

Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue. Today, the CAFC, while affirming much of the UPSTO’s fact finding, did indeed remand the case for further consideration of a new definition of “electronic mail” or “electronic mail message.”

The eight related appeals included thousands of claims of the NTP portfolio, of note, the USPTO rejected all but one of the previously adjudicated (RIM Litiigation) NTP claims in patent reexamination. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected and affirmed (BPAI). Rejections were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims were added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

Today, the CAFC affirmed the rejection of all 764 claims of the ’592 patent. (NTP I, here).

A second decision (NTP II, here), which pertains to the remaining patents noted above as well as a few others, Vacated-in-part, Reversed-in-part, and Remanded previous determinations of the BPAI.

What does all of this mean for NTP? Read the rest of this entry »

Claim Interpretation Practices in Patent Reexamination

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. In past posts, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination. More recently, I have discussed changes to petition practice for accelerating petition processing, and avoiding common petition issues when a Third Party withdraws from an inter partes patent reexamination.

With June drawing to a close, and with public comments due to the USPTO on the Streamline Proposals due today (June 29, 2011), this will be my final post of this multi-part series.

In this post I explain how a relatively common claim interpretation deficiency is overlooked by the USPTO, leading to unnecessary reexamination proceedings and expense for Patent Holders. Read the rest of this entry »

Retroactive Correction of Patent Claims

Back in March, I discussed the degree of change that can be secured from the USPTO via a Certificate of Correction (COC). As a reminder, one of the more limited methods to address errors in an issued patent is via COC as defined by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination.

Once issued, a valid COC is only effective prospectively. For this reason, such certificates are best secured at the earliest possible date.

Of course until claims are very closely scrutinized, the need for minor correction may not be so apparent. In cases where the COC is not secured for years, is there a mechanism available to retroactively correct a patent claim as to such minor errors? Read the rest of this entry »

In re Lund Affirmed Per Curiam

Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.

The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.

Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion.  Read the rest of this entry »

USPTO Forced to Turn a Blind Eye to Support Issues in Patent Reexamination

Last year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2^nd is not possible.  

As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. 

In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017) Read the rest of this entry »

Additional Prosecution History Proves Crucial

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer, may provide new, non-infringement positions to defendants.

This week, the CAFC relied upon statements made by a Patentee in the patent reexamination of U.S. Patent 5,355,964 to affirm claim construction findings of the EDVA and NDCA. Read the rest of this entry »

Infamous Katz Portfolio Withers Under Pressure of Patent Reexamination

USPTO empirical data is quite helpful for determining the frequency by which claims are amended, cancelled, or confirmed in patent reexamination. Yet, when it comes to the overall efficacy of patent reexamination, USPTO statistics only tell part of the story.

A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to defendants. Likewise, such statements may limit the Patentee’s ability to distinguish the prior art.

In the ongoing patent reexaminations of the Katz portfolio, there have been significant victories for challengers. However, as made clear by the CAFC last week (In re Katz Interactive Call Processing Patent Litigation) not every victory shows up in USPTO statistics as cancelled/amended claims. Read the rest of this entry »