Whether in a social or tactical environment, everyone knows the importance of a good wingman. Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.
In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims. In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).
Would Solicitor participation in these cases have protected the institutional interests of the BPAI? The answer is not clear. However, absent Solicitor participation, the BPAI’s record will be left to speak for itself. Read the rest of this entry »
On October 13th, the Federal Circuit held in Solvay v. Honeywell International that, in order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2), the prior invention must have been conceived in the United States. The precedential decision (here) relates to ozone friendly fluorocarbons commonly used in refrigeration and heat storage systems. At issue in the appeal was whether or not Honeywell’s reproduction of technology, conceived by a Russian contractor, invalidated Solvay’s patent claims under 102(g)(2).[1]
In reversing the district court’s finding of invalidity under 35 U.S.C § 102(g)(2), the CAFC concluded that Honeywell’s employees did not qualify as “another inventor” under section (g)(2) because (1) they were not involved in the conception of the technology and (2) those who had conceived the invention were outside of the United States.
102(g)(2) requires prior invention in the U.S. In contrast, 102(g)(1), which governs patent interferences, allows for prior invention in foreign countries as permitted by 35 U.S.C. § 104. So would there have been a different outcome given the facts reported in the decision if this dispute had occurred in a patent interference?
Read the rest of this entry »
This past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding. The decision, Ex parte Regents of the University of California (“Regents”) (decision here), affirmed-in-part the rejection of U.S. patent No. 5,916,912 in ex parte reexamination.
In particular, the Board held that Regents could not antedate U.S. Patent No. 5,998,474 (“Cavazza”) because the ‘912 patent and Cavazza were claiming the same patentable invention. Applying, 37 C.F.R. 41.203(a), the Board reasoned that the two patents were directed to “the same patentable invention” since a claim of the Regents patent is obvious in view of a claim of Cavazza, and vice versa.
This leaves the Regents in a bind, aside from challenging the BPAI decision to the CAFC, how can an interfering patent applied in patent reexamination be overcome? Read the rest of this entry »
The USPTO has announced that 37 C.F.R. 41.200(b) is no longer viable in light of the Federal Circuit’s Agilent Technologies, Inc. v. Affymetrix[1] decision, and has thus cancelled the rule.
As discussed in earlier posts commenting on the Agilent and Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company[2] decisions, the Federal Circuit has concluded that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim should be interpreted in light of the specification of the targeted patent or application. In contrast, Rule 41.200(b) required that a claim in interference be given its broadest reasonable construction in light of the specification in which it appears.
With Rule 41.200(b) taken out of its misery, one has to wonder what guidance examiners will be given when examining claims “copied” to provoke an interference. Will examiners be instructed to apply one claim construction when considering written description and another claim construction when applying prior art to the same “copied” claims? Will the MPEP be updated?
If nothing else, the PTO’s decision to cancel Rule 41.200(b) in response to Agilent reinforces the prevailing opinion that interference practice is arcane.
[1] 567 F.3d 1366 (Fed. Cir. 2009).
[2] 590 F3d 1326 (Fed. Cir. 2010).
… or is it? Rumors of the demise of interferences via patent reform have been greatly exaggerated for years. Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best. In any event, we continue our review of S.515 provisions related to post grant matters. On March 4th and 5th, we outlined the provisions in S.515 which would change reexamination and implement a new Post-Grant Review revocation mechanism, respectively. Today, we discuss what little of substantive interference practice[1] will remain if S.515 is enacted — namely, derivation proceedings.[2]
Currently, derivation cases are a species or type of interference decided by the Board of Patent Appeals and Interferences (“BPAI”). In an interference proceeding at the BPAI, derivation is proven by establishing prior conception of the interfering subject matter and communication of the conception to the opposing party.
Examiners rarely, if ever, suggest an interference sua sponte. Consequently, in the vast majority of cases, an applicant wishing to initiate a derivation proceeding is required to suggest an interference pursuant to 37 C.F.R. § 41.202. The suggestion of an interference is initially considered by an examiner, who is instructed by the MPEP not to even consider the suggestion of interference until after he or she has decided that the targeting applicant’s claims are in condition for allowance, but for the existence of the targeted application or patent. Therein, lies the rub. As stated in MPEP Read the rest of this entry »
The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:
In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended. {Emphasis added.}
However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner? Read the rest of this entry »
All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan. When is it OK to take a mulligan via reissue? The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997. As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:
(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) 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.}
You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision Read the rest of this entry »
Ex Parte Tanaka, decided last December by the Board of Patent Appeals and Interferences (BPAI), held 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. Although this decision is seemingly straight forward on its face, Tanaka may cause a significant shift in the workload internal to the USPTO.
With pendency of patent applications increasing and a growing inventory of applications awaiting appeal, a cynic would argue that Tanaka is a transparent attempt by the Board of Patent Appeals and Interferences (“BPAI”) to reduce the number of pending reissue applications awaiting examination, and/or to short circuit applicant efforts to use patent reissue as a substitute for failing to keep a continuation application pending. Be that as it may be, an unintended consequence of Tanaka will likely be Read the rest of this entry »
In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination. In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple. Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed.
What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent? This may be the case, for example, Read the rest of this entry »
In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.” Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears. One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference. In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).
A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit. In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim Read the rest of this entry »
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