Patents Post Grant Blog

Hisamitsu Pharmaceutical requested ex parte reexamination of only claims 1, 3 and 6 of its own U.S. Patent No. 7,034,083 (the “’083 Patent”) based upon certain prior art.  However, the USPTO ordered reexamination on all claims (i.e., claims 1-6) of the ‘083 Patent.

Generally, if a requester chooses not to request reexamination for a claim, that claim will typically not be reexamined. Yet, the decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office. See MPEP 2240; Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

During reexamination of the ‘083 Patent the Patentee placed the features of claim 2 into claim 1. In response to the amendment, the examiner again rejected claims 1 and 3-6 over a reference cited in the original prosecution. On appeal, the BPAI in Ex parte Yasukochi et al. affirmed the examiner’s rejection of claims 1, and 3-6.

In its decision, the BPAI refused to consider the appellant’s argument that the rejection of the claims over old art was improper, because it did not raise a substantial new question of patentability (SNQ), holding that the question of whether an SNQ exists is a petitionable issue and not an appealable issue.

In order to properly contest the new rejection, the patent owner should have Read the rest of this entry »

In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI,  (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.

Figure 1 – Trailer Life Magazine’s Spy Photograph

In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist, Read the rest of this entry »

In last week’s discussion on the topic of declaration usage in patent reexamination, we explained the benefit of such evidence in close cases, illustrated by both the dissent and majority comments on the limited evidence of record in ex parte Rehrig Pacific Company

Several days after the Rehrig Pacific decision, the BPAI once again emphasized the importance of such evidence.  On May 28, 2010, in inter partes reexamination 95/000,008 (Shimano v. Rolf Dietrich BPAI 2010-001847), the Board analyzed the issue of written support relative to newly claimed static tension ranges of a bicycle rim. With regard to the new limitation, explicit support did not exist in the specification, but the Patentee argued that one of skill in the art would nevertheless recognize such disclosure as provided in the specification.  In rejecting this argument Read the rest of this entry »

 

Rejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The ‘802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.

The BPAI affirmed the rejection of method claims 12-15 of the ‘802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed…kinda Read the rest of this entry »

In a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.

Yesterday, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. A notice relative to inter partes is expected in the near future. These improvements should help avoid some of the more aggravating delays experienced on appeal to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable Read the rest of this entry »

Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal Read the rest of this entry »

On March 15, 2010, an expanded BPAI panel that included Chief APJ, Michael Fleming and Vice Chief APJ, Allen MacDonald rendered a decision on rehearing of an expired patent of the infamous Ronald A. Katz Technology Licensing L.P portfolio. The rehearing addressed the standard for claim construction in expired U.S. Patent No. 5,561,707. A copy of the decision is found (here).

The original BPAI decision contained a statement that, in construing the claims of an expired patent during a reexamination proceeding, “the claims will not be narrowed by interpretation not required by the claim language.”  The expanded BPAI panel clarified the statement made in the original panel decision by stating that “[i]t does not say that the claim terms cannot be interpreted using different words or limit the sources of claim meaning.”

The expanded panel agreed that 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)

Ex parte reexamination appeals:

For FY 09 ending September 30, 2009 the BPAI docketed 119 ex parte reexamination appeals; disposed of 96 and ended the fiscal year with 78 ex parte reexamination appeals in inventory.

BPAI pendency was 5.9 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 27.7 months down .3 months from FY 08. The pendency of BPAI decided appeals from ex parte reexamination filing date was 58.2 months down 2.2 months from FY 08.

Inter partes reexamination appeals:

For FY 09 ending September 30, 2009 the BPAI docketed 15 inter partes reexamination appeals; disposed of 11 and ended the fiscal year with 10 inter partes reexamination appeals in inventory.

BPAI pendency was 7 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 32.1 months up 4.5 months from FY 08. The pendency of BPAI decided appeals from inter partes reexamination filing date was 67.3 months up 16.4 months from FY 08.