Patents Post Grant Blog

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)

 

 

 

–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 »

Ex Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), held that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.  Although this decision is seemingly straight forward on its face, Tanaka may cause a significant shift in the workload internal to the USPTO.

With pendency of patent applications increasing and a growing inventory of applications awaiting appeal, a cynic would argue that Tanaka is a transparent attempt by the Board of Patent Appeals and Interferences (“BPAI”) to reduce the number of pending reissue applications awaiting examination, and/or to short circuit applicant efforts to use patent reissue as a substitute for failing to keep a continuation application pending.  Be that as it may be, an unintended consequence of Tanaka will likely be Read the rest of this entry »

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I, II and III)”, we discussed using pending reexamination proceedings to support invalidity contentions, prove inequitable conduct, and rebut allegations of willful infringement.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to support and oppose motions for preliminary injunction.

 

Reexamination Evidence Used to Support or Oppose Motions for Preliminary Injunction

When deciding to grant or deny a preliminary injunction, the courts consider four factors: (1) the likelihood of success on the merits; (2) the irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.  Procter & Gamble Co. v. Kraft Foods Global Inc., 459 F.3d 842, 847 (Fed. Cir. 2008).  To defeat a showing of likelihood of success on the merits, alleged infringers will attempt to attack the infringement, validity, or enforceability of the patent at issue.  Specifically, to diminish likelihood of success on the merits with regard to a patent’s validity, accused infringers have attempted to introduce evidence that the patent is undergoing parallel reexamination proceedings. Read the rest of this entry »

As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.

 

Reexamination Evidence Used to Rebut Willfulness

Willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent” and the “objectively defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.”  In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  Thus in order for willful infringement to be found, the accused infringer must have known or should have known that the relevant patent was valid.  Willfulness is to be evaluated “under the totality of the circumstances.” Id. at 1369.  Thus, alleged infringers accused of willful infringement have asked the court to consider the existence of pending reexamination proceedings.  The theory asserted by alleged infringers is typically a variant of the following: where the PTO has granted a request for reexamination, and thus concluded that substantial questions of patentability exist, an alleged infringer could not have acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.”  In other words, where the PTO has called into question the validity of the patent by granting reexamination, any infringement thereafter could not have been willful. 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.

Admissibility in Litigation?

 

 

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee. Read the rest of this entry »

The U.S. District Court for the Southern District of Indiana in Cook, Inc. v. Endologix, Inc. (Case No. 1:09-cv-01248) has stayed the litigation of Cook’s stent patents pending the outcome of the ex parte reexaminations of the patents-in-suit. U.S. Patent Nos. 5,755,777 and 5,035, 706 (now expired) have been asserted by Cook against Endologix’s Powerlink and IntuiTrak systems covering stent grafts and methods of their use in treatment of abdominal aortic aneurysms.

The stay of litigation was granted despite the fact that the parties are direct competitors, Cook claimed that it was in a weak financial condition and Endologix’s sales of purported infringing sales were increasing. With the ’706 patent already expired and the ’777 patent set to expire in 2011, the patent owner will be precluded from amending or adding new claims during reexamination of the ’706 patent and the ’777 patent as well, if the reexamination of the ’777 patent is not concluded by the time the patent expires.

In such circumstances, MPEP § 2258(I) suggests that patent claims in the reexamination will be interpreted in the USPTO in the same manner as a judge in the district court or International Trade Commission would do in litigation.  However, as discussed in a prior blog post, a panel of the Board of Patent Appeals and Intererences concluded In Ex parte Personalized Media Communications, Inc., Appeals 2007-4044 and 2008-0334, Reexamination Control Nos. 90/006,697, 90/006,841, and 90/006,800 (BPAI, 2008) that claim language of an expired patent can be construed more narrowly than its ordinary and customary meaning only to the extent needed to resolve an ambiguity.  If the claim term is clear, the panel concluded that the broad reasonable standard generally applied by the USPTO should be used.  See also Ex parte Peng Tan, Appeal 2006-3235, Reexamination Control No. 90/006,696 (BPAI, 2008)(affirmed by the Fed. Cir.).