Patents Post Grant Blog

CAFC Revisits “Loser Estoppel” in Patent Reexamination

While reexamination is often initiated parallel to litigation, some have relied upon reexamination in post-trial settings to get out from under injunctions and/or jury verdicts.

One of the more well known cases in this regard is In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding. See Also In re Translogic Tech. Inc. (CAFC 2007)

Yesterday, the CAFC heard oral argument in the case of In re Construction Equipment. Construction appealed from a decision of the BPAI in ex parte patent reexamination that found the claims of the patent anticipated and/or obvious. Previously, the CAFC found the Construction patent not invalid on appeal from the District Court. Thereafter, the appellant pursued ex parte reexamination on some of the very same art previously considered.

During oral argument the court, sua sponte, questioned the propriety of the USPTO’s seeming dismissal of the Court’s previous validity ruling. Read the rest of this entry »

Callaway Pro V1 Golf Dispute Taken to Virginia District Court

This past January, I recounted the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway has asserted that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873) in the Delaware District Court.

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. In March of this year the BPAI decided the appeals of these reexaminations, finding the asserted claims of the Callaway patents invalid. Likewise, the same claims were found invalid in March of 2010 by the Court (neither dispute has made it to the CAFC).

Interestingly, patent reexamination was sought by Acushnet despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court. In fact, the Court has found Acushnet to have breached the terms of the settlement agreement by virtue of the patent reexamination filings (decision here).

At the outset of the reexamination proceedings Callaway attempted to have the reexamination proceedings vacated Read the rest of this entry »

New Therasense Guidelines to Invite Extrinsic Evidence Abuse?

As discussed yesterday, the USPTO has proposed to modify asepcts of Rule 1.56(b) and Rule 1.555(b) to comport to the materiality standard of the recent Therasense decision of the CAFC. In doing so, the Office has proposed a definition of ”but for-plus” materiality standard defined by acts of omission (duty of disclosure) together with affirmative acts relating to willful false statements and misrepresentations (duty of candor and good faith).

Rule 56 is an ethical guidepost that pertains only to Patent Applicants. As such, aside from a rare protest under Rule 1.291 or 1.99, third parties do not submit prior art materials to the USPTO under this Rule (of course patent reform will provide more opportunities for pre-grant submissions). Instead, Rule 56 compliance is litigated as an element of an inequitable conduct defense to patent infringement. Charges of inequitable conduct are not substantively considered in patent reexamination as the Office is a less than ideal arbiter of questions of “intent.” 

Currently, the USPTO is proposing to define, by Rule, a materiality standard in terms of “bad acts.” Consequently, has the USPTO now undermined established practice (MPEP) by encouraging new 1.555(b)(2) submissions for consideration of such information in patent reexamination? Read the rest of this entry »

USPTO’s Rule 56 “But For-Plus” Proposal

Last week, the USPTO published proposed changes to the materiality standard of  37 CFR §§ 1.56 and 1.555 in response to the Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co.

Impressively, the USPTO has managed to publish the proposed changes in just under two months (since the issuance of the Therasense decision). The initiative to craft such meaningful proposals in such a short time period, as well as the intention to help alleviate the significant duty of disclosure obligations is certainly greatly appreciated by all stakeholders.

In distilling the essence of Therasense down to succinct language for rule making purposes, the USPTO has promulgated a “but for-plus” test.

Is this test appropriate as currently presented, or does it require a bit more seasoning?  Read the rest of this entry »

Therasense “But For” Standard Codified by USPTO

As mentioned yesterday, the USPTO has now issued a Notice of Proposed Rule Change in the Federal Register on Rule 56 and Rule 555. The proposal is for the Office to adopt the materiality decision of the recent Therasense decision of the CAFC. (Proposal here)

I will have more commentary on this proposal in the coming days.

Manner of Amendment Obscures Claim Meaning

Back in October of last year I explained the recently concluded patent reexamination of Card Activation’s U.S. Patent 6,032,859. In the previous post, I discussed that placing confirmed/allowed dependent claims in independent form was unnecessary in patent reexamination.(MPEP 2260.01) While this procedural nuance would seem fairly trivial, the manner of making amendments can have significant impact outside the USPTO.

In the case of the Card Activation reexamination, claims 20 and 29 (independent) were amended to include the features of confirmed claims 21 and 32. That is to say, claims 21 and 32 could have simply been retained in their current form, without the need to amend the base claim. At the time, I explained that Card Activation may have unnecessarily narrowed other dependent claims, which could result in an intervening rights defense.

Last week, the Delaware District Court considered the manner of this amendment in an altogether different context. The Court found the amended claim lacking written description support on summary judgement, and in the process, shed some light on the seemingly short sighted choice in amendment style.

Read the rest of this entry »

USPTO Posts Public Comments on Patent Reexamination Streamline Proposals

As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will now begin the process of considering to implement/modify the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

The deadline for submitting comments to the USPTO was last Wednesday. Comments submitted to date can be found posted (here). (Note: AIPLA and ABA comments are not yet available as they are still being drafted.)

I am pleased to report that several proposals published on this blog (and submitted separately on behalf of my firm) have been adopted by the IPO, Intellectual Ventures, and other bar organizations.

When Inter Partes Patent Reexamination Becomes One Sided

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. Most recently, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination.

Earlier this month, I explained the presentation I gave at the USPTO public meeting of  June 1st for accelerating petition processing. As most practitioners realize there is a petition crisis at the USPTO that is a direct result of the increased use of inter partes patent reexamination. In my previous proposal on this topic I explained that certain, procedural disputes are commonly petitioned in inter partes patent reexamination. For example, petitions relating to  page limits, petitions to strike filings, etc. The Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals.

In addition to processing such seemingly routine petitions in a different manner, the Office should also consider eliminating situations that generate such petitions as a matter of course. Read the rest of this entry »

USPTO Proposal Forces Patentee Cooperation in Violation of Statute?

Last Monday, I proposed managing petition practice in inter partes patent reexamination based on the patent interference model already in place. As a reminder, this proposal is responsive to the proposed collection of working concepts and initiatives published in the Federal Register for the purpose of streamlining patent reexamination. (a copy of the Federal Register Notice is found here) I discussed this proposal at the USPTO, along with other speakers on June 1, 2011. (webcast and other materials here)

As I mentioned in last week’s post, the USPTO proposal to modify and make permanent the Pilot Program for Waiving the Patent Owner Statement was not discussed in detail during the meeting. However, this proposal, at least from feedback I have received, is one of the more controversial.

In a nutshell, the USPTO is proposing to modify the existing Pilot Program by: (1) Making the Pilot Program permanent; and (2) Issuing a first “provisional” first action together with the Order of reexamination for those Patentees that do not agree to waiver. With respect to the “provisional” first action, unless a Patentee files a Statement overcoming the rejections in the Provisional Action, the next action would issued as a Final Rejection; therein lies the controversy. Read the rest of this entry »

BPAI Agrees Invalidated Claims are Invalid

In a strange development, the BPAI issued a decision yesterday invalidating claims 1-6 of U.S. Patent 6, 961,737. While the decision itself is straight forward, it is odd in that claims 1, 3, 4 and 6 were previously invalidated by the CAFC.

As discussed this time last year, the ‘737 Patent was one of the patents at issue in In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010). On May 28, 2010, the CAFC determined that all but claims 2 and 5 of the ‘737 Patent were invalid based upon prior art, including a patent identified as the “Bobo Patent.” The decision was noteworthy as footnote 3 explained the final rejection status of the reexamination, lamenting that the appeal may have been mooted altogether had the reexamination been at a more advanced point. At that time I pointed out that had the defendants not delayed their request for some two years that they may have been able to save themselves the cost of the CAFC appeal.

Yesterday, the BPAI essentially agreed with the CAFC, invalidating all claims based on the Bobo Patent, but such was a waste of time and resources. (decision here)

As noted in MPEP 2286, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination.

So why did the BPAI waste the time in issuing this appeal decision? Read the rest of this entry »