Willfullness Determination Opens Door to Prejudice
One purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent.
Some courts have found that reexamination evidence defeats a finding of willfulness, these courts typically examine the status of the claims in the reexamination proceeding at the time of the willfulness determination, finding that the weight of the reexamination evidence depends on whether the reexamination proceedings are complete and whether the patent claims have undergone substantive changes in reexamination. When seeking introduction of such evidence, depending upon the court, the stage of the parallel litigation (Summary Judgment, JMOL, Pre-Trial Motions) may determine whether or not it is admissible.
In recent years, courts have been reluctant to admit evidence of an ongoing patent reexamiantion at trial. This is because the presumption of validity may be undermined by communicating to the factfinder(s) that the USPTO has changed their mind. This trend is especially prominent in plantiff forums such as Texas. Read the rest of this entry »
Parallel Litigation Settles, Now What?
With the vast majority of patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of Patentees is “what becomes of the patent reexamination once the litigation settles?”
In the case of ex parte patent reexamination, the answer is simple: the reexamination continues unaffected. Indeed, as demonstrated a few weeks back (In Re Construction Equipment, CAFC (2011)), the ultimate outcome of the ex parte reexamination can even effectively reverse an earlier decision of the CAFC.
On the other hand, if the pending reexamination is an inter partes patent reexamination (IPX), the answer will depend on the nature of the terms of the settlement agreement. In a best case scenario for Patentee, the IPX proceeding may be vacated altogether by operation of estoppel. Of course, to trigger IPX estoppel, the settling defendant/requester must agree to a consent consent judgement in the district court (not effective in the ITC as estoppel does not apply) that they failed to prove invalidity. In most cases, defendants are loathe to publicly admit defeat. Still, unwary Patentes may be walking away from significant opportunity if just swinging for the fences. Read the rest of this entry »
BPAI Reverses Rejections on CAFC Claim Construction
The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM. The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation. However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.
Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).
The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims. Read the rest of this entry »
Determination of Non-Obviousness by USPTO Disregarded by Court
Last week’s CAFC decision in In re Construction Equipment decided the validity of U.S. Patent 5,234,564…..again. In the first appeal, decided in 2001, the CAFC upheld the validity determination of the District Court. In the second appeal, decided last week, the CAFC considered an appeal from the USPTO rejecting the claims of the ‘564 patent in ex parte patent reexamination. In their second decision, the CAFC found the ‘564 Patent invalid in light of some of the very same prior art references at issue in the first appeal.
In her dissent Judge Newman questioned the constitutionality of the USPTO looking over the shoulder of the CAFC.
In a case of “turnabout is fair play,” last Friday, a United States District Judge for the District of Connecticut considered, and disregarded, the USPTO’s reexamination analysis of the same prior art in Jacobs Vehicle Equipment Co. v. Pacific Diesel Brake Co. et al. (D.Conn). Read the rest of this entry »
CAFC Appeal Result Undone 11 Years Later
Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date.
On the other hand, ex parte patent reexamination (EXP) has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for ex parte patent reexamination. In this way, the infringer could attempt to “undo” the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing.
As I explained this past August, the CAFC questioned this “do-over” practice during the oral argument of In re Construction Equipment. Last week the CAFC issued a decision in this case. In the process, the CAFC disturbed the holding of their first decision, issued some 10 years earlier. Read the rest of this entry »
USPTO Considers Record Number of Requests for Patent Reexamination
In fiscal year 2011 the USPTO initiated a total of 1133 patent reexamination proceedings (both ex parte and inter partes). The 2011 tally represents an overall increase in filings of about 7% relative to 2010 numbers.
Interestingly, while ex parte filings receded slightly, inter partes filings surged by 33% relative to 2010. In FY 2011 374 requests for inter partes patent reexamination were filed.
USPTO statistics for 2011 are found (here)
Ex parte patent reexamination proceedings are typically disfavored over inter partes reexamination proceedings as being too one-sided, and historically biased in favor of patent holders. Likewise, as patent reexamination is increasingly employed as a litigation tool, it is not surprising that the more robust proceeding is now Read the rest of this entry »
New Appeal Rules Effective January 23, 2012
This past Monday the USPTO released the final rule package pertaining to the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. (here).
This final rule notification stems from the earlier notice of proposed rule making issued last November. The rules are limited to ex parte proceedings only and have no bearing on patent interferences, or inter partes patent reexamination. Likewise, the new rules will not control Inter Partes Review or Post Grant Review. The final rules become effective on January 23, 2012. (for appeals initiated on or after the effective date)
In response to the original publication of the rules, I pointed out that the proposal provides an interesting safeguard against new rejections in an Examiner Answer. Namely, the filing of a 1.181 petition challenging such a rejection tolls the period for filing a Reply brief. Thus an Applicant may await decision on the petition before filing the Reply. This provision will be very helpful in patent application prosecution, but may aggravate ex parte reexamination pendency if abused. Read the rest of this entry »
Shift in BPAI Fact Finding Necessitates New Rejection
Back in February, In re Stepan (or In re Side-steppin if it helps you remember the case) was argued before the CAFC. In a previous post, I explained how this case demonstrated a problem addressed by the 2010 proposed rule package for practice before the BPAI. Namely, the shifting in rejection grounds during appeal relative to that of the originally applied rejection. The newly proposed Rules attempt to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course once prosecution is closed as no new rebuttal evidence may be entered.
Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer or BPAI decision can be quite prejudicial during patent reexamination. This is because, 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 »
USPTO Post Grant Consideration Precludes “But For” Materiality
The en banc CAFC decision in Therasense has recalibrated inequitable conduct jurisprudence. The decision effectively tightened the standard that is applied in judging materiality of information underlying an inequitable conduct defense. More specifically, the Court replaced the previous “reasonable examiner” standard with a new ”but for” materiality analysis. The “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.
As I discussed prior to the issuance of the Therasense decision, a “but for” materiality standard applies in Walker Process antitrust claims. Earlier this year, in U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), the California District Court considered whether or not prior art materials could satisfy a “but for” materiality standard where the USPTO had considered the very same information in a patent reissue proceeding, and had still reissued the patent. In deciding that this information could not be material as a matter of law, the Court explained that while a USPTO proceeding cannot cure fraudulent conduct, it can be dispositive of a “but for” materiality standard and that ”[b]ecause the PTO reexamines re-issuance applications as if being presented for the first time, the fact that the PTO did re-issue Defendant’s patent even with the prior art precludes Plaintiff from plausibly pleading [Walker Process].[1]
Since the court’s initial ruling on the Walker process claim, the Therasense decision issued. Last week, the Court considered the applicability of the same art under an inequitable conduct theory. Read the rest of this entry »
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