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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 ‘Procedures’ Category

USPTO Warns on Late Inter Partes Patent Reexamination Filings

Posted On: Aug. 30, 2012   By: Scott A. McKeown
USPTO-deadlineSeptember 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 »

Propriety of Third Party Reexamination Declarations

Posted On: Aug. 10, 2012   By: Scott A. McKeown
waiver-CAFCCAFC 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.

CAFC Probes Statutory Basis For Third Party Declaration Filings in Patent Reexamination

Posted On: Apr. 18, 2012   By: Scott A. McKeown
reexamination declarationsCan 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 »

When to Petition/Appeal at the USPTO?

Posted On: Nov. 3, 2011   By: Scott A. McKeown
Topics: Appeals, Procedures
petiition or appealProper Petition Practice Especially Critical in Patent Reexamination

In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)

The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights. Read the rest of this entry »

Why Patent Owners Should Consider Operating Within Page Limits

Posted On: May. 16, 2011   By: Scott A. McKeown
Freebies-ListInter Partes Patent Reexamination Petition Practice May Back Fire on Unwary Patentees

In inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.

On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.

As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis. Read the rest of this entry »

Pursuing Denied SNQs in Inter Partes Patent Reexamination

Posted On: Mar. 30, 2011   By: Scott A. McKeown
snqPetition or Appeal?–Pursuit of SNQ Denial at the USPTO

When pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because a third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).

Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.

But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds. Read the rest of this entry »

Fast Tracking Inter Partes Patent Reexamination by Agreement

fast-track-packageGetting Your Case Stayed By Stipulated Acceleration

Many inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.

So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it? Read the rest of this entry »

Death by Amendment, Practical Impacts of Patent Reexamination Pendency

Posted On: Sep. 8, 2010   By: Scott A. McKeown
speedupCellectis Patent Surrendered by Operation of Inter Partes Reexamination Pendency

Last week, the litigation between Cellectis S.A. and Precision Biosciences Inc., (E.D. N.C) No: 5.08-CV-00119-H was stayed pending the outcome of inter partes patent reexamination proceedings involving the patents at issue in the litigation, namely, U.S. Patents 6,610,545 and 7,309,605. In the decision to stay the case, the same familiar factors were analyzed. Of particular interest is the court’s discussion of the “undue prejudice” factor.

In discussing the undue prejudice factor, the court noted that both of the patents at issue will expire in May of 2012. By pointing this out, the court surmised that should the case be stayed, any improper shifting of market share (due to infringement) would be transient at best in view of the relatively imminent patent expiration. Thus, the court found that the balance of equities favored staying the case. With regard to patent expiration, the court explained:

[I]t is uncertain whether the PTO’s reexamination will be completed before the patents expire and highly unlikely that any appeal of the PTO’s decision will be resolved prior to the expiration of the patents.

In pointing out this fact, the court unknowingly emphasized a sad reality for Cellectis. By amending the ‘605 Patent, Cellectis has effectively surrendered this patent by operation of USPTO pendency. Read the rest of this entry »

Turning Off an Inter Partes Patent Reexamination

Posted On: Aug. 23, 2010   By: Scott A. McKeown
shut_downCan 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 »

Are Third Party Opposition Petitions Permitted in Inter Partes Patent Reexamination or Not?

Posted On: Jul. 6, 2010   By: Scott A. McKeown

quietLast 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 »