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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 ‘Procedures’ Category

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 »

USPTO Provides Feedback on Prometheus Issues

Posted On: Jul. 9, 2012   By: Scott A. McKeown
Prometheus patentExamination Guidelines & Reexamination Determination Issued

Last week, the USPTO issued examination guidelines in light of the ruling in Mayo v. Prometheus this past March. The guidelines are entitled ”2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature. ” (here) The notice explains that the new guidelines will primarily apply to Art Unit 1600, and supersede the initial memo issued by the USPTO to the Examining Corps. on March 21, 2012.

As a reminder, this notice is directed to patent examination, not reexamination. Patentable subject matter issues may not serve as a basis for patent reexamination. There is currently no vehicle (at least until September 16, 2012) for a patent challenger to pursue 101 arguments before the USPTO. This is because patent reexamination is initially limited to patents and printed publications only. As discussed this past May, submitting such challenges in patent reexamination is often litigation inspired, but not without risk of collateral damage to other arguments.  Read the rest of this entry »

Prometheus Based Patent Reexamination Requests?

Posted On: May. 7, 2012   By: Scott A. McKeown
Prometheus patentPatentable Subject Matter Challenge Advanced in Patent Reexamination

This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus. The decision held that certain patents of Prometheus Laboratories were directed to non-statutory subject matter. Specifically, the Court found the Prometheus patents, claiming methods of administering a blood test to calibrate necessary drug dosages in patients suffering from autoimmune diseases, to be directed to laws of nature.

The decision was an important one for the bio/pharma community, especially as it relates to the 101 analysis currently before the CAFC in the Myriad gene patent dispute.

However, when it comes to such patentable subject matter challenges under 35 U.S.C. § 101, there is currently no vehicle for a patent challenger to pursue such arguments before the USPTO. This is because patent reexamination is limited to patents and printed publications. Yet, challengers will occassionally test the bounds of the USPTO’s patience in this regard by infusing requests with extraneous commentary.  Read the rest of this entry »

USPTO Shaves Months Off Patent Reexamination Pendency

Posted On: Feb. 27, 2012   By: Scott A. McKeown
reexaminaton certificateReexamination Certificate Printing Process Streamlined

A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate. The certificate functions to communicate the results of the proceeding to the public (claim changes/cancellations, etc.)

Historically, upon issuance of the NIRC the USPTO would hand the file off to a government printing contractor located in Pennsylvania for printing of the reexamination certificate. Once in the hands of the printing contractor, the file would be reviewed to ensure completeness (and was often times shuffled back to the agency for administrative oversights, largely related to IDS filings). Thus, from the time a NIRC is issued, it is not uncommon for a certificate print cycle to span 4-6 months in duration. This delay was more than just a minor inconvenience for Patentees as amended/new claims do not legally exist until printed. In other words, potential infringement damages for such amended/new claims are lost to bureaucratic inefficiency even though the substantive aspect of the reexamination proceeding is effectively finished.

The good news is that the USPTO has now addressed the printing delay and has drastically reduced the duration of the print cycle in recent weeks. Read the rest of this entry »

Manner of Making Amendments in Patent Reexamination

Posted On: Jul. 8, 2011   By: Scott A. McKeown
reexamination amendmentManner 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 Receives Comments on Patent Reexamination Proposals

Posted On: Jul. 5, 2011   By: Scott A. McKeown
uspto-reexaminationUSPTO 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.

Streamlining Petition Practice in Inter Partes Reexamination

Posted On: Jun. 20, 2011   By: Scott A. McKeown
inter partes reexamination petitionsWhen 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 »

Patent Reexamination Interview Practices Attacked

Posted On: Jun. 7, 2011   By: Scott A. McKeown
patent reexamination interviewPublic 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 »

Streamlining Petition Practice Management in Inter Partes Patent Reexamination

Posted On: Jun. 6, 2011   By: Scott A. McKeown
reexamination petitionsInterference 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 »

Secondary Considerations Rebut Obviousness Finding

Posted On: May. 24, 2011   By: Scott A. McKeown
exceptionRare 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 »