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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 ‘Concurrent Proceedings’ Category

Higher Patent Reexamination Threshold Suffers from SNQ Hangover

Posted On: Jul. 24, 2012   By: Scott A. McKeown
RLP standardClaim-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 »

Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

Posted On: Feb. 16, 2012   By: Scott A. McKeown
patent reexaminationCourt 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 »

NTP Patents Resurface from USPTO Reexamination

Posted On: Dec. 21, 2011   By: Scott A. McKeown
NTP reexamsBPAI Reverses Rejections on CAFC Claim Construction

The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM.  The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation.  However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.

Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).

The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims. Read the rest of this entry »

Limited Patent Reexamination Choices for Late Stage Litigants

Posted On: Aug. 17, 2011   By: Scott A. McKeown
inter partes or ex parte reexaminationInter Partes Patent Reexamination is Not Always the Best Choice

In the case of Inventio AG v. Otis Elevator Co. (SDNY), the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination of the USPTO seemingly demonstrated the potential invalidity of the subject patent. Interestingly, this type of strategic, post-trial benefit of a concurrent patent reexamination is not available if the parallel patent reexamination were an inter partes patent reexamination.

That is to say, in considering the choice between ex parte and/or inter partes patent reexamination, post trial, or late stage litigation strategies must take into account the unique estoppel provisions of inter partes patent reexamination. Read the rest of this entry »

Thereasense Decision & Inter Partes Patent Reexamination

Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination?

On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. 2008-1511.  The majority opinion authored by Chief Judge Randall Rader established a single new standard for determining materiality in inequitable conduct cases. This new “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.

Unlike the prior standard used in determining materiality of undisclosed information, the new standard assesses materiality on a preponderance of evidence burden of proof standard giving the patent claims their broadest reasonable construction in light of and consistent with the supporting patent specification. Presumably, because the majority opinion rejected the applicability of the USPTO’s materiality standard under 37 CFR § 1.56(b)(1), the new “but for” standard will take into account any rebuttable evidence that is proffered by the patent owner such as antedating non-statutory bar prior art and objective indicia of non-obviousness, irrespective of the fact that none of such rebuttal evidence was ever submitted to the USPTO for consideration prior to patent issuance.

A consequence of the new “but for” test for materiality is that, at least for those filings that include art forming the basis of an inequitable conduct defense to infringement, inter partes patent reexamination is now the more attractive option.  Read the rest of this entry »

Serial Patent Reexaminations Work Against Medtronic… Again

Posted On: Apr. 5, 2011   By: Scott A. McKeown
provokeDelay in Case Schedule Allows for Amended Complaint  

Previously, Voda v. Medtronic Inc., et. al. (OKWD) examined the impact of multiple requests for patent reexaminationin the context of a motion to stay. Early in the case the defendant Medtronic was able to secure a stay pending a first request for patent reexamination. Shortly thereafter, the reexamination concluded favorably to the Patent Holder and the stay was lifted. Next, the defendants filed a second request for ex parte patent reexamination, and then a third request along with a second motion to stay the case. The court denied the second motion explaining that the case schedule had already been delayed for some two years.

In a more recent decision (here), the plaintiff was able to add a further patent to the dispute by way of amended complaint. In permitting the amendment of the complaint, the judge once again explained that the defendants reexamination delay worked against them.

In considering the plaintiffs request to amend the complaint to add an additional patent, the court characterized the defendants delay argument as follows:

Defendants’ delay arguments are not well-taken, given that much of the delay that has occurred to date is the result of their filing serial reexamination requests before the PTO. 

This case was brought to my attention by the great Docket Navigator.

Callaway Golf’s Last Stand in Patent Reexamination

Posted On: Jan. 20, 2011   By: Scott A. McKeown
golfGolf Ball Brawl Heard at BPAI

Yesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.

In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.

So, yesterday, the Board learned all about Acushnet, a company known for their balls. Read the rest of this entry »

Therasense to Amplify Demand for Patent Reexamination?

Posted On: Nov. 11, 2010   By: Scott A. McKeown
DIYineqconThe USPTO can Demonstrate the What, Where, Why, and How

The affirmative defense of inequitable conduct is commonplace in most patent disputes. Indeed, many have labeled this defense a “plague” due to its over-use by defendants. The prevalence of inequitable conduct before the district courts is especially debated on the eve of the CAFC en banc review in Therasense, Inc. v. Becton Dickinson and Co. At issue in Theresense is the very foundations upon which an inequitable conduct defense is built. The CAFC will consider the degree of materiality necessary, as well as the degree to which intent may be inferred.

A key issue under consideration by the CAFC in Therasense is:

What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

As an affirmative defense inequitable conduct must be plead with particularity, no matter what the CAFC decides in Theresense.  Likewise, materiality is determined from the perspective of a reasonable examiner …..so, why not just have the USPTO demonstrate what they would have done in the form of an office action in patent reexamination? Read the rest of this entry »

Diffusing the Risk of Inter Partes Patent Reexamination

wrenchUSPTO 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 »

Case Stayed 5 years in Favor of Inter Partes Patent Reexamination to Restart?

Posted On: Jul. 29, 2010   By: Scott A. McKeown

wake_up_call_jpg2Back 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 »