AIA Cited by CAFC as Remedying Known Patent Reexamination Deficiency
As predicted based upon the earlier oral argument, the Federal Circuit closed the door on the potential for discovery in inter partes patent reexamination in Abbott Laboratories v. Cordis Corp. (here) Specifically, the CAFC held that parties to such a patent reexamination proceeding cannot subpoena documents or testimony before the USPTO under 35 U.S.C. § 24.
Interestingly, as was the case earlier in Lingamfelter v. Kappos, the Court utilized the developments of the recent AIA legislation as a lens by which to view the earlier inter partes reexamination statutes, contrasting the earlier legislative intent as:
Congress’s most recent amendment to the Patent Act further demonstrates that Congress intended for subpoenas under section 24 to be made available in those proceedings in which depositions are relied upon by the PTO. In 2011, Congress replaced inter partes reexamination with a new proceeding called inter partes review. . . . The purpose of this reform was to “convert inter partes reexamination from an examinational to an adjudicative proceeding,” and one of its touted “improvements” over the former proceeding is to allow the limited use of depositions. . . . In particular, Congress provided for depositions of affiants in the proceeding, and also authorized parties to “seek such discovery as the Patent Office determines is otherwise necessary in the interest of justice.” . . . In the course of implementing these mandates, the PTO has recognized that the AIA authorizes parties to seek section 24 subpoenas in the new proceedings.
The Court also shot down arguments on due process grounds explaining that there is an opportunity to be heard by a disinterested decision maker in patent reexamination. As such the need for extra controls, such as discovery, are not justified by a “serious constitutional problem.”
Reexamination Filing Surge Dismissed as Speculative
Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th. This surge was a result of several factors: First, the fee for ex parte patent examination was jumping from $2520 to $17,500 as of the 16th; and, as a result of the one year anniversary of enactment of the America Invents Act (AIA) on the 16th, September 15th was the last day to file a request for inter partes patent reexamination.
Currently, the Central Reexamination Unit (CRU) is working through the bolus of filings, still trying to get them all docketed and reviewed within the 90 day statutory period. Seizing upon this influx of work, a Patentee recently argued against staying their district court proceeding pending inter partes patent reexamination — arguing that the USPTO process would now be much slower.
Read the rest of this entry »
CAFC Finds SNQ Denial Not Subject to Appeal in Inter Partes Patent Reexamination
Back in March of 2011, an expanded panel of the Board of Patent Appeals & Interferences (BPAI) decided Belkin International et al., v. Optimumpath LLC. Belkin’s appeal stemmed from a denial of a proposed SNQ of an inter partes patent reexamination request of U.S. Patent 7,035,281 (95/001,089). The initial request for inter partes patent reexamination was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.
The denial of the SNQ targeting claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit (CRU). Upon reconsideration, the Director refused to reverse the examiner. On the other hand, Belkin did not petition the denial of SNQs pertaining to the claims being actively reexamined (claims 1-3 and 8-10). During prosecution of the reexamination, the rejection of claims 1-3 and 8-10 was withdrawn by the examiner. Thereafter, Belkin appealed the withdrawn rejection of claims 1-3 and 8-10 together with the denial of the SNQs pertaining to those reexamined claims.
The procedural issue before the Board was whether or not denied SNQs, which pertain to claims being actively reexamined (i.e., claims 1-3 and 8-10) must be petitioned rather than appealed to the BPAI. The Board found that:
[I]f the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)
Yesterday the CAFC weighed in on the debate. Read the rest of this entry »
September 15 Deadline Fast Approaching
Yesterday, the USPTO issued a notice entitled September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form (here) The notice is essentially a warning to practitioners that although September 15th is the official filing deadline for inter partes patent reexamination filings, the practical filing deadline is likely the week of September 4th. Read the rest of this entry »
CAFC Avoids Determining Propriety of Third Party Declaration Practice in Inter Partes Patent Reexamination
Yesterday, in Lingamfelter v. Kappos, (here) the CAFC decided that the Patentee had waived the right to contest the propriety of the third party declarations filed in their inter partes patent reexamination. (earlier post here)
The crux of the Patentee’s argument was that the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters—and “comments” as recited in the relevant statute cannot embrace testimonial “evidence” of declarants.35 U.S.C.§ 314(B)(2) The Patentee further decried the allegedly improper practice as unfair, pointing out that discovery is not permitted; thus there is no way to demonstrate the inaccuracy of the submitted evidence.
The CAFC seemed intrigued by the Patentee’s contentions during oral argument, but ultimately side stepped the issue finding the argument waived, explaining:
We need not address the merit of Lingamfelter’s arguments, however, because in our view, he has waived them. To begin with, Lingamfelter was too late in challenging the introduction of the evidence into the record. He did not object when third party requesters’ evidence was submitted to the examiner at the early stages of the inter partes proceedings (in July 2005), or when the first appeal from the examiner’s decision was presented to the Board (in December 2006). It was not until he elected to reopen the case before the examiner (in February 2010 and more than four years after the proceedings had begun) that he contended the examiner lacked authority to receive the contested evidence from third party requesters. Even at that late stage, however, Lingamfelter still did not sufficiently brief the issues that he raises in this appeal.
While a loss for this Patentee, it seems very likely that the issue will reemerge at the CAFC in the months ahead.
Claim-by-Claim Application of RLP Standard a Problem for Patent Challengers in Late Stage, Parallel Litigation
As the era of Inter Partes Patent Reexamination (IPX) draws to a close, recent third party requesters are finding the the new standard for initiating IPX to be quite problematic. The higher standard, has led to a greater percentage of partial and full IPX denials.
A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners). Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect. Read the rest of this entry »
CAFC Standard of Review Driven by Appeal Posture
The appeal of a rejection from the Board of Patent Appeals & Interferences (BPAI) to the Court of Appeals for the Federal Circuit (CAFC) is a relatively uncommon event in the prosecution of patent applications. This is because the cost of such an appeal is rarely advisable in light of the ability to simply request continued prosecution before the Examiner.
On the other hand, post grant proceeding appeals from the BPAI (and soon to be Patent Trial & Appeal Board (PTAB)) to the CAFC are far more commonplace. Unlike application prosecution, where virtually unlimited prosecution is possible via requests for continued examination (RCEs), neither patent reexamination nor the new post grant proceedings of the America Invents Act (AIA) permit such alternatives to appeal. Moreover, amendment of claims during these proceedings is generally disfavored as creating an intervening rights defense, and patents subject to post grant proceedings are almost always high-value assets. Accordingly, as the popularity of post grant proceedings continues to increase, so too do the number of appeals from the USPTO to the CAFC.
When considering decisions of the USPTO, the CAFC employs either a de novo standard of review or substantial evidence standard of review, as appropriate. Not surprisingly, appeals that employ the de novo standard provide a more significant opportunity for reversal than those that do not. For this reason, it is important to understand the Court’s practice in applying one standard over the other. Read the rest of this entry »
Can Declaration Evidence be Considered “Written Comments”
Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent reexamination creates a limited prosecution window relative to the prosecution of patent applications. For this reason, submission of declaration evidence by Patentees under 37 CFR § 1.131 and/or 37 CFR § 1.132 is fairly routine in patent reexamination proceedings.
For Requesters, it is critical to respond to the declaration evidence of the Patentee in kind, especially as the Requester will be estopped from advancing failed arguments of the IPX in a district court or subsequent USPTO proceeding.
Despite this well established, declaration practice in IPX, a recent reexamination dispute before the CAFC questions the statutory propriety of Requester declaration submissions. Read the rest of this entry »
Court Cites ACP as Supportive of Summary Judgment of Invalidity
Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the accused infringers often attempt to use the grant of reexamination to substantiate their invalidity contentions. The argument is that an alleged infringer’s invalidity contentions are entitled to more weight where the Patent Office has found at least some substantial new question of patentability based on those same arguments, or can demonstrate repeated rejections of the claims by the USPTO.
This tactic, while often deemed too prejudicial for consideration by a jury is often times an acceptable practice for summary judgment purposes. The advantages of this practice were demonstrated last week in General Electric v. Mitsubishi Heavy Industries (NDTX). Read the rest of this entry »
Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel
The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”
By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).
As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan. Read the rest of this entry »