Patents Post Grant Blog

As noted by USPTO reexamination statistics, the majority of recent patent reexaminations are also involved in concurrent litigation.  A recurring issue for litigants involved in such disputes is the fashioning of an appropriate protective order to adequately protect confidential materials. Such issues become particularly contentious in litigation between direct competitors.

Understandably, defendants typically seek protective orders providing  maximum protection of confidential materials, forbidding litigation counsel from using these materials in the prosecution of plaintiff’s patent applications. This prohibition known as a “patent prosecution bar,” is largely standard practice.  However, it is well established that patent reexamination does not involve “patent applications.” Thus, a thornier issue is presented when attempting to extend this bar to include barring participation by individuals with access to confidential information in ongoing reexamination proceedings.

Courts have taken divergent paths on the issue.  Some courts Read the rest of this entry »

Patent owners face a dilemma when they are involved in reexamination proceedings with concurrent patent litigation. They may become aware of potentially material information during litigation that is covered by a protective order. Yet they have a duty to the USPTO to disclose information known to be material regardless of the source of such information.

To avoid violation of the protective order, the USPTO provides a mechanism for submission of protective order materials under seal pursuant to MPEP §§ 724.02 and 724.04(c) with a petition to expunge the submitted information. In accordance with MPEP guidelines, information subject to a protective order, must be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a document “Subject To Protective Order.” If the item or document is “Subject to Protective Order” the proceeding, including the tribunal, must be set forth on each document or item. The envelope or container, as well as each of the documents or items, must be labeled with complete identifying information for the file to which it is directed, including the Office or area to which the envelope or container is directed.

Any materials, i.e., information, properly submitted under MPEP § 724.02 in a reexamination proceeding will be sealed from public view. The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. A petition to expunge (37 CFR 1.59) should accompany the submission of proprietary materials, and in any event, must be filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC). If the petition to expunge is not filed in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process, or the petition is filed, and denied/dismissed, then the materials submitted under MPEP § 724.02 will be released to the public with any other papers in the reexamination file.

Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge is in the reexamination file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.

If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reexamination file and open to the public. Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version.

If all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged. If a portion of the submitted information is found not to be material to patentability, and a portion is found to be material to patentability, the petition to expunge will be dismissed, and patent owner (or the requester, in limited instances where appropriate) provided with an opportunity to separate the material and non-material information, such that the non-material information can be expunged.

It is preferable that the petition to expunge be submitted upon filing of the protective order information under seal. If a petition to expunge is not filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of the NIRC, the materials submitted under MPEP § 724.02 will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d). In the event materials have already been made of record by a party, and it is subsequently determined that the materials are protected, the proper petition to submit would be a petition to seal the protected material under 37 CFR 1.182, with the requisite fee.

Finally, practitioners should keep in mind that when such protective order materials are voluminous, as is usually the case, the petitioned review of materiality at the time of NIRC can be time consuming for the Office. Therefore, to avoid delay in printing of the reexamination certificate practitioners should consider seeking a de-designation of such materials via court order, where feasible.

–Third Party Tactics in Reexamination –

Part II of our discussion on 2282/2686 

Previously, we analyzed Patent Owner compliance with MPEP 2282/2686 in patent reexamination in the wake of Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir. 2009).  Specifically, the previous post explored the Patent Owner’s duty to notify the Office of concurrent proceedings (2282 for ex parte, 2686 for inter partes).  

In this installment, we explore MPEP 2282/2686 relative to the duty to notify the Office of external proceedings, such as a district court litigation involving the patent at issue.  

For example, 2282 provides: 

Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. (emphasis added)

The lack of ability to participate in an ongoing ex parte reexamination is deemed a significant drawback Read the rest of this entry »

Is it Possible to Comply with Larson Manufacturing?

Two weeks ago, we discussed the merger of concurrent post grant proceedings relating to the same patent at the USPTO.  In addition to concurrent proceedings of a same patent, it is also quite common for entire portfolios of a Patent Owner to be subject to reexamination.  In such cases, the reexamination of different patents (including direct continuations of one another) are not merged.  Likewise, there may also be ongoing continuation patent application examination (i.e., patent applications claiming subject matter directed to the same invention in applicant’s earlier filed patent and meeting the conditions of section 120 of the patent statutes) being examined concurrently with the parent patent in reexamination.  However, reexamination proceedings are not merged with non-reissue application examination.

In such concurrent proceeding situations, what are the obligations of the Patent Owner in satisfying the duties of disclosure, candor and good faith? Read the rest of this entry »