Patents Post Grant Blog

GEOSPAN Corporation filed a lawsuit in March 2008 in the United States District Court for the District of Minnesota, alleging that Pictometry infringed  GEOSPAN’s U.S. Patent No. 5,633,946.

In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)

In its request, GEOSPAN set forth substantial new questions of patentability based upon  a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.

On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting  the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the  inventors’ work where none of the inventors is an author of the printed publication used to reject the claims.  Read the rest of this entry »

Can an Ongoing Patent Reexamination be Stopped?

With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”

In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.

In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel. Read the rest of this entry »

In a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.

Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

USPTO statistics demonstrate that Patent Owner’s fair much better in ex parte patent reexamination as opposed to inter partes patent reexamination. Current statistics indicate that all claims are canceled in patents subject to ex parte reexamination in 12% of cases, while the same statistic stands at 49% for patents subject to inter partes reexamination.

Of course, the number of concluded inter partes reexamination as compared to ex parte reexamination is still relatively small, likely skewing the statistics. Yet, it is quite clear that eliminating the active voice of the third party requester, as well as avoiding third party appeal of confirmed/allowed claims is highly desirable from a Patent Owner perspective.

Knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, is there a preemptive strategy a patent owner can employ to diffuse the risk of inter partes patent reexamination? Read the rest of this entry »

Back on September 25, 2005, Judge Farnan of the United States District Court for the District of Delaware stayed the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc. (Civil Action 03-185) relating to U.S. Patent 6,523,680. The stay was entered in favor of inter partes reexamination 95/000,072.

Yesterday, the rejection of issued claims 1-14 was reversed at the BPAI (decision here). The refusal to adopt a rejection of claim 6 and 13 was also affirmed. Thus, the Third Party, Rexnord Industries, may find itself on the wrong side of the estoppel equation of 35 USC 315 (c) very shortly.

More importantly, will the court recognize the significant delay to date, and the appeal reversal as justification enough to lift the stay? Read the rest of this entry »

Last week, the Delaware District Court stayed the litigation proceedings in  Enhanced Security Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No. 09-571-JJF, (June 25, 2010) at the defendant’s request in view of two ongoing patent reexaminations. As the  Delaware court statistically seems more receptive to stays than say, the Eastern District of Texas Court in Marshall Texas, this development is not at all surprising. 

Of more interest to me, is a recent petition decision (April 15, 2010) in the inter partes reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).

In responding to the first action, the Patentee filed a reply over the 50 page limit identified in ( 37 CFR 1.943). Recognizing this problem, the patentee, at the time of filing the reply, simultaneously petitioned for waiver of the page limit under 37 CFR § 1.183. In response, the Third Party filed an opposition petition under 37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition under 37 CFR § 1.183 to waive the rules to allow for consideration of their § 1.182 petition.

In deciding the patent owner’s petition, the Office of Patent Legal Administration (OPLA) granted the Patentee a waiver of the 50 page limit. Curiously, however, OPLA expunged the third party opposition petitions from the record and took the position that third parties have no right to oppose procedural filings of patent owners in inter partes reexamination proceedings. OPLA reasoned that the inter partes patent reexamination statutes only permit a single response to substantive issues of patentability. While I don’t necessarily disagree with OPLA’s action, I find the reasoning to be curious, as I have never seen an inter partes patent reexamination in which third party opposition petitions were not filed.  In fact, the USPTO’s Electronic File System (EFS) has a selectable document code and corresponding description “Reexamination– Opposition filed in response to petition.” ……….What Gives? Read the rest of this entry »

As a review for new readers, some IPR basics.

Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent.  Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents.  Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added.  There are two types of reexamination proceedings: ex parte and inter partes.  An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action.  The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse Read the rest of this entry »

Unlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.

A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed. Read the rest of this entry »

In light of the recent uptick in non-compliant requests for patent reexamination, last week the Central Reexamination Unit provided FAQs and best practices for preparing patent reexamination requests. The document is linked to the USPTO’s Patent Reexamination Information and Statistics page. This page is a great resource, including a lot of helpful information on pendency and CRU workload.

In addition to our previous posts on this topic (Part I & Part II), we will have more thoughts on the PTO guidance in the coming weeks.

On April 28, 2010, The USPTO’s Board of Patent Appeals and Interferences (BPAI) rejected claims 1-3 of Wisconsin Alumni Research Foundation’s (WARF) “Primate Embryonic Stem Cells” Patent (U.S. Patent No. 7,029,913, the ’913 patent).  The WARF patent is licensed to Geron Corporation and is subject to Inter partes Reexamination as Control No. 95/000,154.  The BPAI reversed the Examiner’s decision to allow the claims.

The claims cover pluripotent human embryonic stem cells (ES) cultured in vitro. The request for inter partes reexamination of the ’913 patent was filed on July 17, 2006 by the Public Patent Foundation (PubPat) on behalf of The Foundation for Taxpayer & Consumer Rights (FTCR), now known as Consumer Watchdog. The BPAI decision does not affect two other WARF embryonic stem cell patents (U.S. Patent Nos. 5,843,780 and 6,200,806) that were challenged by FTCR in reexamination proceedings resulting in confirmation of the patentability of their claims in reexamination certificates. However, the rejection of the ’913 patent claims may have a reverberating effect on the stem cell industry.

Following an order granting inter partes reexamination of the ’913 patent on September 29, 2006, the Examiner rejected claims 1-3 based on anticipation and obviousness rejections. However, in the Action Closing Prosecution Read the rest of this entry »