Patents Post Grant Blog

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 »

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable Read the rest of this entry »

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 »

Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal Read the rest of this entry »

The March 4, 2010 Manager’s Amendment to S. 515, known as the Patent Reform Act of 2010 may be substituted for the Senate Judiciary Committee-passed version of S. 515, and then be considered by the Senate as a whole prior to Memorial Day. It is expected that Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to the “hotline” procedure which will substitute the Manager’s Amendment for the passed version of S. 515, and permit the bill to pass the Senate without debate. The hotline bill is then recorded in the Congressional Record as a being agreed to by unanimous consent.

Furthermore, hotlines can include amendments, but limit debate and discussion. A key to passage of the bill is that it does not require individual votes on the amendment or the underlying bill. However, any Senator can throw a “monkey wrench” into the process by putting a hold on the bill, if he or she objects to its provisions. To counter this action, the Administration has thrown its support behind the legislation and urges that the bill be passed this year. Such action may ensure that Democratic Senators line up in support of the hotline and that Republican Senators can be persuaded to not put a hold on the bill. A hotline request is expected to be sent from Republican Minority Leader Mitch McConnell (R-KY) to Republican Senators.

For a more detailed discussion see the IPWatchdog post of earlier this week.

United States District Court for the Northern District of California, San Francisco Division Judge Richard Seeborg issued an Order on April 26, 2010 denying a motion to stay Ultra Products, Inc. v. Antec, Inc. (Civil Action No. C 09-04255 RS) pending the outcome of a possible inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,133,293 (the “‘293 patent”). The ‘293 patent is directed to a modular computer power supply that is designed to reduce problems with personal computer cords. A decision on a refiled request for inter partes reexamination dated March 29, 2010 based on Neo-Power 480 materials has not yet been made by the USPTO.

In his decision to deny the stay of the patent infringement litigation, Judge Seeborg weighed three factors. The first two factors involve whether a stay would unduly prejudice or present a clear tactical advantage to the nonmoving party and will simplify the issues in question and trial of the case. The third factor is whether discovery is complete and a trial date has been set. He concluded that taken together these factors weigh against a stay of the patent litigation.

The judge exercised his discretion to deny the motion for stay on the basis that the stay would threaten Read the rest of this entry »

EDVA District Court Judge Payne denied the accused infringers’ motion to stay a patent infringement suit pending the outcome  of reexamination of the patents-in-suit in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-cv-620 (E.D.Va. March 31, 2010).   ePlus filed a patent infringement suit in May, 2009, against Lawson Software, Inc., and others alleging infringement of its patents covering electronic sourcing systems, which allow potential buyers to identify items for purchase in a plurality of electronic catalogs and create a requisition order for purchase of the selected items.

SAP America, Inc. and SAP AG had filed for an ex parte reexamination of one of the patents-in-suit.  The  USPTO ordered reexamination of the patent.  ePlus’ appeal to the BPAI in the ex parte reexamination proceeding has not yet been decided.  Later Lawson  filed an inter partes reexamination request against other patents-in-suit.

Judge Payne considered the standard set forth Read the rest of this entry »

Patent reform changes to the post grant landscape seem inevitable with S.515 gaining traction.  As such, a brief review of other patent systems may shed some light on the mixture of provisions that may ultimately be offered in the U.S, and their degree of harmonization with other international post grant review mechanisms.

The following is a comparison of Reexamination/Invalidation Proceedings at the State Intellectual Property Office (SIPO) of the people’s republic of China to Inter Partes Re-examination Proceedings at the USPTO.  In contrast to the United States where invalidity can be determined by the Court or by the USPTO through Re-examination, the Chinese Patent Reexamination Board (PRB) has sole jurisdiction over patent validity issues in China.  The Courts do not have jurisdiction to invalidate a patent.  PRB decisions may, however, be appealed to the Beijing People’s Intermediate Court, and further appealed to the Beijing People’s High Court.

In Japan, since January 1, 2004, the Japan Patent Office (JPO) has conducted Read the rest of this entry »

Senate Judiciary Chairman Patrick Leahy (D-Vt.) is pushing Senate leaders to bring the Patent Reform Act of 2010 (S. 515), as amended March 4, 2010, to the Senate floor before the Memorial Day recess. Internet reports have Senate Majority Whip Richard Durbin (D-Ill.) stating that Leahy would like Senate leaders to vote on S.515 after the Senate completes work on financial regulatory and food safety legislation.

Senator Leahy was quoted last Thursday as stating  “We need to get to issues that concern the American people, including Wall Street reform and patent reform.”

It is quite possible that in order for S. 515 to pass the Senate quickly, it may have to be included in an Omnibus Appropriations Bill needed to fund federal agencies for FY 2010.

Last Friday, Chief Administrative Patent Judge of the USPTO’s Board of Patent Appeals and Interferences, Michael R. Fleming, presented an update on inter partes reexamination appeals (IPRA) at the ABA, IPL Section Conference.  At mid-year for 2010, pendency of BPAI decided appeals from date of Reexamination filing is 64.3 months. In 2010, 16 IPRA are in inventory of which 13 have been docketed at the BPAI.  6 BPAI decisions in IPRA have issued this year.

For those that missed it, Judge Fleming’s presentation is found here: inter partes reexamination statistics and BPAI information.

Further, the BPAI held its First Annual Conference on April 7, 2010 speakers included, Gregory Morse (Director of the USPTO’s CRU); Chief Judge Michael R. Fleming (BPAI); The Honorable Paul R. Michel (CAFC); The Honorable Randall R. Rader (CAFC); W. Todd Baker (Contributing Editor of PatentsPostGrant.com and Partner at Oblon Spivak, McClelland, Maier and Neustadt, LLP) as well as other members of the bar. Stephen G. Kunin (Contributing Editor of PatentsPostGrant.com and a partner at Oblon Spivak, McClelland, Maier and Neustadt, LLP) moderated the panel.

For those that missed this well received program, the materials may be found here