Confirmed Dependent Claims Confuse Court?
It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.
Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay.
In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice. Read the rest of this entry »
Patent Reexamination Cited in Government Brief to Supreme Court
As noted last week, the amicus briefing in support of respondent i4i was due last Friday at Supreme Court (Microsoft v. i4i). In i4i’s brief, it was emphasized that by providing the patent reexamination statutes, Congress has tacitly acknowledged the clear and convincing standard. In other words, by providing an alternative USPTO forum in which the clear and convincing standard does not apply, the standard used by the district courts was well understood by Congress.
This theme was also emphasized in the amicus briefing, however some briefs seem to struggle with the standard to be used for evidence that may not be considered via patent reexamination Having failed in their patent reexamination efforts, this category of evidence is at the heart of the Microsoft dispute. Read the rest of this entry »
Extraordinary Development Prompts USPTO Relief for Applicants and Patentees
In view of the terrible tragedy currently challenging Japanese citizens, the USPTO has announced today that patentees in patent reexamination may opt to reset their present due dates. (full notice here). The option is available to those inventors, assignees, and associated individuals in the area affected by the unprecedented devastation.
Unfortunately, third party requesters in inter partes patent reexamination will still need to submit comments subject to the 30 day response period. Likewise, a requester responding to a patent owner statement in ex parte reexamination must respond on time. As these response periods are statutory, the USPTO cannot reset this timing. (see last paragraph of the notice).
The portion of the notice relevant to patent reexamination is noted below:
Shotgun Approach to Patent Reexamination Request Haunts Defendant
Within a few days of filing, requests for patent reexamination are reviewed by the USPTO for basic compliance as to matters of form. Currently, upward of 30% of filings are returned as non-compliant. While practitioners may find this perceived nit picking an annoyance, as a recent case demonstrates, the USPTO may be doing you a huge favor.
Yesterday, in Old Reliable Wholesale, Inc. v. Cornell Corp., (Fed. Cir. 2011), the CAFC reversed an award of attorney fees and costs (roughly $200k) to defendant Cornell. The fee award stemmed from an earlier infringement suit of U.S. Patent 5,069,950 directed to insulated roof board. The reversal as to fees was based, in part, on the fact that the USPTO favorably concluded an ex parte patent reexamination (90/009,258) of the ‘950 patent.
While the CAFC reversed the fee award based upon the favorable consideration of certain prior art in the reexamination, it appears as though this art was largely overlooked, perhaps, due to the format of the defendant’s request. Read the rest of this entry »
Board of Patent Appeals & Interferences Explains Accessibility Considerations
In the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.
In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained that Read the rest of this entry »
Star Scientific’s Belated Victory in Patent Reexamination, Missed Opportunity?
Last week, Star Scientific’s ex parte patent reexaminations (90/009,372 & 90/009,375) were favorably terminated based upon responses filed in November of 2009. The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.
The 16 month delay between the November 2009 filing and March 2011 termination was the result of a procedural dispute. I discussed this development last Spring for the purposes of illustrating the importance of filing a proper interview summary in ex parte patent reexamination. As I pointed out at that time, misguided petition practice can turn a relatively minor miscue into a much larger problem.
In June of of 2009, a Maryland jury determined that Star’s patents were invalid. The jury also found that RJR did not infringe either patent. Star appealed to the Court of Appeals for the Federal Circuit (CAFC), oral arguments were heard on January 11, 2011. In their appeal, Star is seeking a new trial, alleging that RJR tainted the jury by referencing improper evidence.
On Friday, Star issued a press release touting their patent reexamination results. But, with the CAFC appeal briefed and argued, does the reexamination have any relevance at all? Read the rest of this entry »
Patent Enforceability Key Factor In Patent Reexamination Eligibility, Not Expiration
In patent reexamination strategy, especially concurrent to litigation, timing is everything.
1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)
2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)
3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.
But what about expired patents?
Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, Read the rest of this entry »
When Can the Board Change the Target?
In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.
Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here). Read the rest of this entry »
Petition Filings Soar in Patent Reexamination
This past Monday, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. As previously noted here, Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.
Mr. Schor made several points of great interest to all post grant practitioners namely: Read the rest of this entry »
Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency
(click to enlarge)
As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date.
In formulating the program, the USPTO noted that roughly 10% of Patentees file such statements. Thus, by presenting the option to waive the statement, arguably, 90% of filings could be accelerated by 3-5 months. Yet, initial response to the program seemed to indicate that Patentees favored this de facto delay.
Now that a larger number of proceedings have been subject to the program a clearer picture is emerging.
Read the rest of this entry »
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