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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Ex Parte Reexamination’ Category

Supreme Court Once Again Passes on Fresenius Patent Reexamination Result

Posted On: May. 19, 2014   By: Scott A. McKeown
Octane FitnessCourt Declines Review of Finality Issue

The CAFC first considered the validity of Baxter International’s U.S. Patent 5,247,434 (the ‘434 patent) on appeal from a patent infringement litigation with Fresenius. In that first 2009 appeal (now commonly referred to as Fresenius I), the Court upheld the patent over certain prior art. After Fresenius I, the litigation dispute went back to the district court on a damages related remand.

Meanwhile, in May 2012 a patent reexamination proceeding initiated by Fresenius in 2007 made its way to the CAFC. The reexamination was based on much the same prior art as previously considered in Fresenius I. This time, the CAFC affirmed the determination of the PTAB (then BPAI) that the claims were obvious over the applied prior art applying the more liberal standards for USPTO challengesEn banc review was then sought, but declined by the CAFC. A petition of certiorari on the seemingly conflicting results was also pursued, but denied by the Supreme Court.

Thereafter, Fresenius II made it’s way to the CAFC to determine whether the outstanding damage award of the district court was enforceable in light of the CAFC’s decision in In re Baxter (2012). The CAFC held that since the damage award was not yet final, it was essentially voided by the cancellation of the patent in reexamination. Once again, en banc review was sought, and denied by the CAFC, last summer. A second petition for certiorari was then pursued for Fresenius II. This most recent petition was denied today, finally ending the dispute.

Given the high court’s lack of interest in Fresenius I, which more squarely presented the issue of seemingly conflicting final results, it is not at all surprising Read the rest of this entry »

Patent Reexamination is Getting Faster

Posted On: Mar. 4, 2013   By: Scott A. McKeown
speedDecrease in Patent Reexamination Docket Leads to Faster Orders

Back on September 16, 2012, the America Invents Act (AIA) replaced the old inter partes patent reexamination system with a new proceeding, known as Inter Partes Review (IPR). Since petitions for IPR are not handled by patent examiners, but instead, the judges of the Patent Trial & Appeal Board (PTAB), the USPTO’s Central Reexamination Unit (CRU) has experienced a significant cut to their incoming workflow. This change in workflow, coupled with the fact that requests for ex parte reexamination are also off by roughly 50% of pre-AIA filing rates, has resulted in an apparent benefit for patent challengers.

Ex parte patent reexamination requests are being processed faster.

Read the rest of this entry »

Is There Value To Ex Parte Patent Reexamination After the AIA?

Posted On: Feb. 14, 2013   By: Scott A. McKeown
ex parte reexamEx Parte Patent Reexamination Filings Fall by 50% After AIA

Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination statutes excluded those patents that issued from applications of the pre-1999 vintage. So, for those patent challengers hoping to take advantage of the lower cost USPTO proceeding as an alternative to patent litigation, ex parte patent reexamination was the only show in town— albeit, statistically speaking, a less than ideal option for patent challengers.

Further, ex parte patent reexamination provided the only manner by which a patent challenger could remain anonymous. This feature was especially important for those challengers hoping to test the mettle of an issued patent without inviting a retaliatory law suit from the Patentee.

Of course, the post grant patent world changed forever on September 16th 2012. On this date inter partes patent reexamination was discontinued in favor of the more robust Inter Partes Review (IPR) proceeding. Unlike its predecessor proceeding, IPR proceedings may be used to challenge any patent, regardless of vintage. In addition to this important expansion in inter partes applicability, the USPTO fee to request an ex parte patent reexamination soared from $2520 to $17,750.

So, with the availability of the more robust IPR option, and the attendant price increase to ex parte reexamination, is there still value in pursuing an ex parte patent reexamination proceeding?

Read the rest of this entry »

CAFC Finds PTAB More Than Mere Umpire

ptabOver the years, the PTAB has shed it’s “super-examiner” role to more of that of an umpire— calling balls and strikes. That is to say, the PTAB has drifted toward a relatively narrower view of the scope of issues it will substantively review on appeal, perhaps as a matter of necessity in dealing with the crushing weight of the growing appeal backlog.

Yesterday, in Rexnord Industries v. Kappos (2011-1434), the Federal Circuit shifted the focus of the PTAB away from their recent umpire-like practices toward a more traditional judicial review model.

The Federal Circuit reversed the PTAB for failing to consider all theories raised by an appellee in support of an examiner’s decision in an inter partes patent reexamination irrespective of whether the theory or ground was adopted by the examiner. Rexnord, the third party requester, had proposed rejections based on a combination of references with the added rationale that a certain claimed feature – a gap of less than 10 mm – was merely an obvious design choice. The examiner rejected the claims on the proposed combination of references but did not adopt the design choice theory, instead, opting to substitute his own reasoning. Namely, the examiner’s rejection was premised on an interpretation of the claims which permitted the gap to be 0 mm, or nonexistent.

The PTAB reversed the examiner but refused to consider Rexnord’s “obvious design choice” argument as an alternative basis for affirming the examiner. The PTAB reasoned that its role on appeal  Read the rest of this entry »

CAFC Considers Lack of Discovery in Patent Reexamination

discovery in patent reexaminationFederal Circuit Unlikely to Open the Door to Discovery via Subpoena in Inter Partes Patent Reexamination

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Historically discovery has not been permitted in patent reexamination proceedings because, according to the USPTO, patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24. This argument makes perfect sense for ex parte patent reexamination, but perhaps less so for inter partes patent reexamination proceedings. Since much of the case law denying discovery in patent reexamination came about decades ago in the ex parte patent reexamination context, it is surprising that it took this long for the applicability of discovery in the inter partes context to make it up to the CAFC. (although the lack of discovery in inter partes patent reexamination has been recently emphasized in Lingamfelter v. Kappos)

Last week the Federal Circuit heard oral argument (here) in Abbott Laboratories v. Cordis Corp. (12-1244) on the issue of whether parties can subpoena documents or testimony in an inter partes patent reexamination proceeding before the USPTO under 35 U.S.C. § 24.   Read the rest of this entry »

Patent Trial & Appeal Board Shuts Down Patent Reexamination

Posted On: Dec. 13, 2012   By: Scott A. McKeown
PTAB-reexaminationConcurrent Post Grant Proceedings with the Same Real Party in Interest

One of the more intriguing aspects of the new patentability trials of the America Invents Act (AIA) is their potential interplay with legacy post grant proceedings such as patent reissue, ex parte and inter partes patent reexamination. In formulating the rules to implement the new AIA proceedings, namely, Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) review, the USPTO did not specifically define how conflicting proceedings would be processed. For example, the first half of 35 U.S.C. § 325(d) explains that the Board may provide for the ”stay, transfer, consolidation, or termination” of either of the conflicting proceedings. Exactly how those determinations would be made was explained as a “case-by-case basis.”

The first PTAB proceeding to examine such issues is IPR 2013-00033. In this proceeding, CBS Interactive petitioned for IPR of patent 7,155,241, assigned to Helferich Patent Licensing. The petition challenged several of the patent’s dependent claims. Concurrently, an inter partes patent reexamination (95/001,864) is also pending, challenging all the of independent claims in the patent. The IPR and reexamination did not challenge any of the same claims, but the same real party in interest asserted some of the same grounds of unpatentability with respect to the same prior art.  In examining the potential conflict between the proceedings, the PTAB opted to stay the reexamination proceeding pending termination/completion of the Review, explaining: Read the rest of this entry »

CAFC Refuses En Banc Review of “Do-Over” Patent Reexamination

Posted On: Nov. 1, 2012   By: Scott A. McKeown
reexamination estoppelCAFC Denies En Banc Review of In Re Baxter Decision

Earlier this year, the CAFC decided In re Baxter International Inc. (here). As a reminder, in Baxter, the CAFC considered an appeal from the Board of Patent Appeals & Interferences (BPAI) that found certain claims of U.S. Patent 5,247,434 unpatentable in an ex parte patent reexamination.

The request for patent reexamination was filed by Fresenius USA Inc. in 2007 during a patent infringement litigation with Baxter. Interestingly, the Court first considered the validity of the ‘434 patent on appeal from that litigation. In that first appeal, based on some of the very same art applied in the reexamination, the Court found the patent not invalid in 2009. In the second appeal, decided in May of 2012, the same art was presented to the Court. Viewing the same art in 2012, on appeal from the BPAI, the Court affirmed the determination of the BPAI that the claims were obvious over the applied prior art.

Judge Newman issued a strong dissent to the second outcome, explaining that “[t]he validity of the Baxter patent was resolved upon litigation in the district court and on appeal to the Federal Circuit. This judgment cannot be “revised, overturned or refused full faith and credit by another Department of Government. . . .. Nonetheless, the court again departs from this principle, trivializes our prior final judgment, and simply defers to the conflicting agency ruling. This is improper.”

Not surprisingly, Baxter petitioned for rehearing and en banc review of the earlier decision. Read the rest of this entry »

CAFC Sides with USPTO on SNQ Debate

Posted On: Oct. 3, 2012   By: Scott A. McKeown
snqCAFC Finds SNQ Denial Not Subject to Appeal in Inter Partes Patent Reexamination

Back in March of 2011, an expanded panel of the Board of Patent Appeals & Interferences (BPAI) decided Belkin International et al., v. Optimumpath LLC. Belkin’s appeal stemmed from a denial of a proposed SNQ of an inter partes patent reexamination request of  U.S. Patent 7,035,281 (95/001,089). The initial request for inter partes patent reexamination was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.

The denial of the SNQ targeting claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit (CRU). Upon reconsideration, the Director refused to reverse the examiner. On the other hand, Belkin did not petition the denial of SNQs pertaining to the claims being actively reexamined (claims 1-3 and 8-10). During prosecution of the reexamination, the rejection of claims 1-3 and 8-10 was withdrawn by the examiner. Thereafter, Belkin appealed the withdrawn rejection of claims 1-3 and 8-10 together with the denial of the SNQs pertaining to those reexamined claims.

The procedural issue before the Board was whether or not denied SNQs, which pertain to claims being actively reexamined (i.e., claims 1-3 and 8-10) must be petitioned rather than appealed to the BPAI. The Board found that:

[I]f the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)

Yesterday the CAFC weighed in on the debate. Read the rest of this entry »

Examiner Claim Confirmations in Inter Partes Patent Reexamination, What Happens on Appeal?

Posted On: Oct. 1, 2012   By: Scott A. McKeown
PTAB reversalHow Often Are Examiner Claim Confirmations Upheld in Inter Partes Patent Reexamination

For challengers in an inter partes patent reexamination (IPX), confirmation of patent claims by the examiner can pose a significant set back. That is to say, the challenger would be estopped (35 U.S.C. § 317(b)) from raising invalidity defenses that “could have been raised” relative to the confirmed claims during the IPX proceeding, in a later court proceeding.

Although IPX is no longer available as an option to patent challengers, the rate of affirmance by the PTAB in such situations will still be of significant interest in the years to come thanks to the avalanche of IPX filings submitted to the USPTO earlier this month.

Based upon the outcomes of the IPX decisions issued so far in 2012, challengers have about a 50/50 chance of reversing at least one claim of the examiner confirmation. Read the rest of this entry »

Anonymity of Patent Reexamination Requests

Posted On: Aug. 8, 2012   By: Scott A. McKeown
Third Party RequesterRevised Rule on Anonymous Requests Subject to Practitioner Interpretation

The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent, and USPTO validity proceedings relating to the same patent.

The aspect of the IPR/PGR estoppel that applies to USPTO proceedings is codified below:

315 (e)(1) Estoppel (applies to IPR; 325(e)(1) codifies the same for PGR & TPCBMP)

PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(emphasis added)

Taking the example of 315(e)(1) estoppel, this estoppel applies not only to a subsequent request for IPR from the same requester (or privies), but to any “office proceeding.” The primary USPTO proceeding that will be impacted by 315(e)(1) will be ex parte patent reexamination (EXP). This is because, by definition, a Post Grant Review (PGR) can only be conducted prior to an IPR. Likewise, inter partes reexamination (IPX) will no longer be an option in a few weeks, ending on September 16th. While theoretically there may still be some IPX proceedings that are being “maintained” by the time the first IPR is concluded, it is more likely that the Patent Trial & Appeal Board (PTAB) would consolidate or stay such parallel Office proceedings. (325(e)(1) will not impact office proceedings for PGR for some years, but will apply in the short term to TPCBMP)

As pointed out previously, in many cases EXP is requested anonymously. (MPEP 2213). To account for this practicality the USPTO issued proposed rules requiring that anonymous filers disclose their identity to the Office so the applicability of estoppel could be assessed relative to EXP filers. In the final rules issued this past Monday the USPTO dropped the identity requirement in favor of a simple practitioner certification; but is the final rule enough to protect Patentees from harassment?

Read the rest of this entry »