Patents Post Grant Blog

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 »

Public Notice Function of Interview Summary Attacked by Nokia

In ex parte patent reexamination, the Patentee may “interview” the examiners in charge of the reexamination in an effort to advance the prosecution of the case.  In most cases, the interview is scheduled to last one hour, during which time the Patent Holder may present amendments, explain their invention, attempt to distinguish their claims over the art of record, etc.  At the close of the interview both the examiners and Patentee prepare and file a summary of the discussion for the public record. As discussed previously, the failure to provide an interview summary can have serious consequences for Patentees.

Of course, an interview summary is not a transcript as is the norm for oral hearings in litigation settings. Instead, it is a high level overview of the discussion between the Patentee and the examiners. Yet, as long as the summary is accurate and competently prepared by both sides, the public is well served by this practice.

Still, as many patent reexaminations are now conducted in parallel to litigation, not surprisingly, the lack of an interview transcript is often played up in court by third parties. It is not uncommon for patent reexamination counsel to be subpoenaed and questioned on the interview discussion, motions filed to require the interview be recorded, or even a rare subpoena issued to a USPTO examiner. 

Most recently, in Apple’s battle with Nokia, the adequacy of the USPTO interview record was called into question.  Read the rest of this entry »

Interference Model to Control Petition Explosion & Manage Filings

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.

To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305)  was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.

My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that Read the rest of this entry »

2011 Patent Reexamination Appeal Results (Q1-Q3)

As discussed last week, every quarter, the BPAI releases general statsistics on patent reexamination appeals.  As promised, I have now gathered statistics that are specific to the type of reexamination proceeding. (Special thanks to the USPTO for providing me these figures).

Below are statistics from October 1, 2010 through May 20, 2011.  Note that Q3 of FY 2011 has not yet closed, so, these statistics to not quite cover all of Q1-Q3.  First let’s look at the overall statistics for 2011. Read the rest of this entry »

Rare Victory in Patent Reexamination

Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. A common form of declaration evidence introduced in patent reexamination, although only rarely successful, attempts to identify objective evidence of non-obviousness. MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As discussed in past posts, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively identify a nexus between this evidence and the patented claims. Occasionally, however, evidence of secondary indicia of non-obviousness can be the difference between winning and losing. Read the rest of this entry »

BPAI Considers Whether a Purchased Publication is Publicly Available

In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March,the degree of public accessibility of such references is key to determining whether or not a given reference qualifies as prior art. In the March decision, public accessibility was not found for a reference limited to confidential distribution among members of a technical group.

Yesterday in Ex ParteePlus Inc, the BPAI considered an appellant’s theory that a proprietary user manual was not publicly accessible since it required a purchase, and included boiler plate language identifying its proprietary nature.

Read the rest of this entry »

How do Appellants Fare on Appeal in Patent Reexamination?

Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).

An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. Read the rest of this entry »

Early Stage Reexamination Result Lacks Probative Value for Summary Judgment Purposes

As discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.

As explained last week in Volterra Semiconductor Corporation v. Primarion, Inc., et. al. (NDCA):

With respect to the PTO Initial Office Actions and reexamination orders, it is well established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1998), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. . . . Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question . . . Therefore, Plaintiff’s objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity.

For the above reasons, parallel patent reexamination filings are almost never concurrently filed for the purpose of convincing a fact finder that a patent should be found invalid. Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, the benefits of parallel patent reexamination evidence are explained as: aiding an inequitable conduct defense, impacting claim construction,  rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive relief.

In the above case, although inequitable conduct was denied on summary judgement for intent reasons, the materiality determination of the reexamination with respect to common references was considered by the court.

This case was brought to my attention by the great Docket Navigator.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).

A short overview of each proposal is detailed next: Read the rest of this entry »