In Re Tanaka Decision on “Bullet Claims” Reversed at CAFC
Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)
As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims. The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”
The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years. Read the rest of this entry »
Walker Process Allegation Defeated by Re-issuance of Original Patent Claims
Post grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.
A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”
In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that Read the rest of this entry »
Expanded BPAI Panel Explains Acquiescence to Restriction Requirement is Not a Correctable Error
As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.
Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same reasoning is also utilized in another under appreciated aspect of reissue application practice, namely the pursuit of non-elected claims. When claims are restricted during original prosecution of the underlying patent application, and those claims are not pursued in a divisional application, such claims cannot be obtained by patent reissue. (very limited exceptions for linking claims in a genus/species sense). This prohibition is known as the “Orita Doctrine,” was applied yesterday in ex parte Goto et al. Read the rest of this entry »
Last Friday, In re Mostafazadeh was argued before the CAFC (argument here). The case explored the boundaries of the patent reissue recapture rule. At dispute in the appeal was whether or not the third step of the rule, as outlined in MPEP 1412.02, is tied to the “critical limitation” (i.e., originally surrendered subject matter) or not. {10:30 min. mark}
The three step analysis of In re Clement is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. (emphasis added)
In considering the case, the CAFC found both the MPEP discussion of step (3) and BPAI decision on this point to be confusing. {14.50 min mark} Read the rest of this entry »
Expanded BPAI Panel Divided on Proper Reissue Practice
The proper interpretation of the patent reissue statutes was explored rather frequently at the Board of Patent Appeals & Interferences (BPAI) in 2010. Several important BPAI decision relating to patent reissue, In re Tanaka, In re Staats, and In re Mostafazadeh are now on appeal to the CAFC. As we begin 2011, the trend appears to be continuing.
Last week, the Board considered the following two questions in Ex parte Shunpei Yamazaki (here), namely:
1. Does 35 U.S.C. § 251 authorize the Office to reissue a patent that has expired based on an expiration date set at the time of issuance of the original patent?
2. Does 35 U.S.C. § 251 authorize the Office to expand in reissue the term of a patent beyond the term of the original patent set at the time of issuance? Read the rest of this entry »
NTP Patent Reexaminations & Key Patent Reissue Cases
With not much going on between holidays, a look forward to 2011 shows some interesting post grant issues teed up at the CAFC.
Oral arguments have been scheduled for In re Tanaka (January 10), In re NTP (February 10), and In re Mostafazadeh (February 11). (CAFC schedule here)
As a reminder In re Tanaka, (on appeal from the BPAI decision of last December) will explore whether or not a reissue application is proper where the only defect identified in the issued patent is the failure to present additional dependent claims. At the BPAI, the Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.
Of perhaps greater interest in the patent reissue area is In re Mostafazadeh. This case will explore the boundaries of the recapture rule as it relates to broadening reissues. Specifically, the CAFC will have an opportunity to provide feedback to the USPTO on the continued viability of Ex parte Eggert 67 USPQ2d 1716 (BPAI 2003) in view of North Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). The USPTO has taken the position that Eggert is no longer binding on the Office. As a result, the Office has considered recapture to foreclose presentation of an intermediate claim scope in patent reissue where a broader claim limitation was surrendered in original prosecution.
Finally, the NTP patent reexaminations of NTP v. RIM fame finally get their day in court. Read the rest of this entry »
Year in Review & 2011 Outlook
As I mentioned last week, nothing says “holiday spirit” like a podcast on patent reexamination/reissue.
Recently, I recorded a podcast for LexisNexis discussing the patent reexamination and patent reissue stories of 2010, and looked forward to prominent cases and expected changes in 2011. Readers of the blog may recognize some highlights. Check it out at the LexisNexis Patent Law Community (here)
Happy Holidays!
Upward of 70% of Patent Reissue Filings Include a Defective Oath
(click to enlarge)
As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.
With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.
Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal. Read the rest of this entry »
Equitable Intervening Rights a Function of USPTO Delay?
Whether a narrowing patent reissue application or broadening patent reissue application, USPTO pendency delay is significant. As discussed yesterday, narrowing reissue applications appear to fare no better than regular U.S. applications, and broadening reissue applications have been known to take as long as 10 years to complete.
Of course, amendments made during patent reissue will result in absolute intervening rights defense for potential infringers. As damages for such amended/new claims will not begin to accrue until issued, Patentees have nothing to gain by dallying during patent reissue prosecution. In fact, as demonstrated by a recent district court ruling, significant pendency delay may in fact create a further limit on available damages for amended/new claims under the doctrine of equitable intervening rights. Read the rest of this entry »
Narrowing Reissue Applications Seem to Fare No Better than Regular Applications
Last week I explained the disappointing state of broadening reissue application pendency over the first 5 years. As shown in the charts above (click to enlarge images), I analyzed the 129 narrowing patent reissues filed since 2005. Not surprisingly, narrowing reissues applications fare much better in terms of pendency (close to 80% being concluded within 5 years).
Apparently, without recapture muddying the waters, and with the more familiar narrowing of claims, the Examining Corps seems to have less difficulty moving these applications along. …albeit at around the same pace as a routine patent application. With most narrowing reissue applications involving highly valued patents, a shorter pendency or “special dispatch” seems to be in order.
As to the low number of narrowing reissues (129) relative to broadening (745), it seems plaintiffs are more willing to try their luck with the heightened invalidity standards of district courts for most “errors made without deceptive intent” rather than revisit the USPTO for several more years.
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