Patents Post Grant Blog

With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding, Read the rest of this entry »

Another week, another patent litigation stayed in a California court pending a concurrent USPTO  reexamination.  This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind. Com. De Equip. Medico (“GMReis”) over Synthes’ U.S. Patent No. 7,128,744 (“the ’744 patent”) covering locking bone plates used in surgery to secure fractured bones.  In his Order Judge Lorenz stated that “[t]o proceed with the case during [inter partes] re-examination [of the ’744 patent] would needlessly duplicate the effort of the USPTO and forgo the benefit of its expertise and analysis.”  He noted that “if the USPTO cancels the patent’s claims the issue of infringement will be moot.”  On the other hand, if “the USPTO reaffirms the patent, the court will have the benefit of the agency’s analysis of the same prior art that GMReis is relying on to challenge the patent’s validity.”  Because the dates for discovery, the Markman claim construction hearing and trial had yet to be set, the judge indicated that these factors weighed in favor of granting a stay of the litigation pending the outcome of the inter partes reexamination proceedings.  The judge was unimpressed by the undue prejudice argument raised by the patent owner, since in the three years that the litigation was pending, “Synthes had not requested a preliminary injunction.”

The Order illustrates the value of an early filed reexamination.  In this case, Smith & Nephew employed a common third party tactic of quickly filing an ex parte reexamination request at the outset of a dispute to get the reexamination going, followed up by a later filed inter partes reexamination request.  This one-two-punch of ex parte and inter partes requests allow the requestor to initiate reexamination quickly, without having to worry about the comprehensiveness of the ex parte request, prior art search, etc.  As the later filed inter partes request is subject to the “could have been raised” aspect of the 35 U.S.C. 315(c) estoppel provision, the later requests is prepared more carefully.

Smith & Nephew filed their ex parte reexamination proceeding (Control No. 90/009,377) on January 8, 2009.  On May 5, 2009 the inter partes request was filed (Control No. 95/000,465).  On July 14, 2009, the USPTO merged the proceedings.  On November 5, 2009, the USPTO issued a non-final Office Action rejecting all of the ’744 patent claims for obviousness over a number of printed publications.

Inter partes reexamination, has created new opportunities for the public to challenge the patentability of some or all claims of issued patents filed on or after November 29, 1999 and to actively participate at each stage in the reexamination proceedings.  Indeed, as noted yesterday, inter partes filings, especially those relating to copending district court litigation,  have surged over the past several years.  Yet, this new proceeding has become a lightning rod of criticism for how it is managed in the USPTO.  Whether by academic rant, or judicial admonishment, inter partes reexamination is largely ridiculed as ineffective and open-ended in time, taking many times on the order of 7 years to conclude.  Yet, the delay in concluding an inter partes reexamination is impacted by many factors, many of which are outside of the control of the USPTO. 

Read the rest of this entry »

–Concurrent Litigation a Driving Force–

The USPTO has released their year end statistics for ex parte and inter partes patent reexamination.  The ex parte statistics may be found here, the inter partes here.  Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the overall 2009 economy, or a shift toward inter partes proceedings.  Perhaps tellingly, the inter partes numbers continue to increase at a strong pace year over year. 

The statistics indicate that a whopping 68% of inter partes reexaminations are known to be in litigation (32% for ex parte). With the continued influx of inter partes reexaminations to the Office, one has to wonder how the USPTO will keep up with the demand.  Indeed, the Office is increasingly criticized with respect to the growing delays associated with inter partes reexamination.  

Tomorrow we will explore how the behavior of inter partes requestors virtually ensures PTO inefficiency, and how such behavior may be discouraged to streamline the proceeding….stay tuned.

In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination.  In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple.  Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed.

What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent?  This may be the case, for example, Read the rest of this entry »

In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.”  Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears.  One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference.  In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application.  See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).  

A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit.  In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim Read the rest of this entry »

The U.S. District Court for the Southern District of Georgia in E-Z-GO v. Club Car, Inc. (Case No. 1:09-cv-119) has stayed the litigation of E-Z-GO’s patent pending the outcome of inter partes reexamination.  E-Z-GO asserts that two of Club Car’s currently marketed electric vehicles infringe U.S. Patent No. 7,332,881, entitled “AC Drive System for Electrically Operated Vehicle.”

The court granted Club Car’s motion to stay the litigation pending the outcome of reexamination despite the fact that the PTO has not yet granted Club Car’s request for inter partes reexamination of the ‘881 patent.  In granting the stay, the court noted that the PTO grants 95% of all requests for inter partes reexamination, and that the stay could be lifted if the PTO declines to grant Club Car’s request for inter partes reexamination.

In recent posts, we have discussed the Northern District of California’s surprising stay of a patent infringement suit in view of an undecided reexamination request.  Likewise, our colleagues at the ITCblog have discussed the opposite extreme, the International Trade Commission (ITC).  The ITC seems to grant stays pending reexamination in only the most extreme of circumstances due to their statutorily mandated time to decision. 

In the Eastern District of Texas, stays although historically disfavored, are beginning to emerge in stipulated form.  Read the rest of this entry »

Ex parte reexamination appeals:

For FY 09 ending September 30, 2009 the BPAI docketed 119 ex parte reexamination appeals; disposed of 96 and ended the fiscal year with 78 ex parte reexamination appeals in inventory.

BPAI pendency was 5.9 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 27.7 months down .3 months from FY 08. The pendency of BPAI decided appeals from ex parte reexamination filing date was 58.2 months down 2.2 months from FY 08.

Inter partes reexamination appeals:

For FY 09 ending September 30, 2009 the BPAI docketed 15 inter partes reexamination appeals; disposed of 11 and ended the fiscal year with 10 inter partes reexamination appeals in inventory.

BPAI pendency was 7 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 32.1 months up 4.5 months from FY 08. The pendency of BPAI decided appeals from inter partes reexamination filing date was 67.3 months up 16.4 months from FY 08.

Many district courts have complained that the length of inter partes reexamination proceedings is a significant deterrent to granting a stay of patent litigation. Consequently, district courts typically deny a stay request where there is a newly filed inter partes reexamination request that could result in an indefinite delay in court action prejudicial to a Patent Owner. The Northern District of California however, appears to have deviated from this approach.

In Advanced Analogic Technologies, Inc. (“AATI”) v. Kinetic Technolgies, Inc. (“KTI”) (Case No. 09-CV-01360), Judge Maxine Chesney of the U.S. District Court for the Northern District of California granted an indefinite stay of a patent infringement suit pending the outcome of inter partes reexamination of AATI’s semiconductor patent-in-suit. The patent-in-suit is U.S. Patent No. 7,127,631 entitled “Single Wire Serial Interface Utilizing Count of Encoded Clock Pulses with Reset.” Both AATI and KTI make semiconductors used in computers, cameras and smart phones that employ integrated circuits with light-emitting driver circuits.

Interestingly, the stay was granted despite the fact that the USPTO has not even reviewed KTI’s inter partes reexamination request . A trial date had been set for March 2011 and significant discovery had been completed.

In the order staying the litigation Judge Chesney indicated that the stay would allow narrowing and clarifying claim construction via the reexamination proceedings. However, both parties agreed, that when accounting for appeals at the USPTO, the inter partes reexamination proceedings could take seven to eight years to conclude.

The parties are required to file annual joint status reports on the progress of the inter partes reexamination proceedings.