Infamous Katz Portfolio Withers Under Pressure of Patent Reexamination
USPTO empirical data is quite helpful for determining the frequency by which claims are amended, cancelled, or confirmed in patent reexamination. Yet, when it comes to the overall efficacy of patent reexamination, USPTO statistics only tell part of the story.
A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to defendants. Likewise, such statements may limit the Patentee’s ability to distinguish the prior art.
In the ongoing patent reexaminations of the Katz portfolio, there have been significant victories for challengers. However, as made clear by the CAFC last week (In re Katz Interactive Call Processing Patent Litigation) not every victory shows up in USPTO statistics as cancelled/amended claims. Read the rest of this entry »
NTP Oral Arguments Reveal Disatisfaction with BPAI
Yesterday, the CAFC considered the patent reexamination appeals of NTP Inc. (see yesterday’s background post). In total, the CAFC heard just under 4 hours of oral arguments. The MP3 file can be found here.
Throughout the arguments the CAFC made it clear that much of the Board of Patent Appeals & Interference (BPAI) record was inadequate as to claim construction. The court repeatedly expressed concern that the competing claim constructions offered by the two parties were not clearly differentiated on the BPAI record. Throughout the arguments, the court repeatedly emphasized that a remand to the BPAI seemed in order. Read the rest of this entry »
Microsoft v. i4i: Legislative Intent of Patent Reexamination?
The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:
Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.
Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.
Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.
In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.
So, why does the USPTO use a different standard? Read the rest of this entry »
Unreasonable to Extend Claim Scope to Described Prior Art
Perhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).
Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification. Read the rest of this entry »
Broadest Reasonable Interpretation (BRI) an Outer Limit?
In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).
Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).
In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.
However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.
Read the rest of this entry »
Cancellation of Dependent Claim Deemed “Amendment in Effect”
If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense (35 USC § 252) Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.
As demonstrated recently, even where an amendment is made to overcome a prior art rejection, such a changed claim can still be considered substantially identical to the previously issued claim. Courts have consistently held that it is not the verbiage of a claim that must be substantially identical. Instead, courts look to the difference between originally issued claim scope relative to the scope of claims exiting patent reissue and/or patent reexamination. Adding another layer of complexity to this calculus is the recent case of University of Virginia Patent Foundation v. General Electric Company. In University of Virginia (here) an independent claim was considered to be “amended in effect” based upon the cancellation of a dependent claim. Read the rest of this entry »
Substantially Identical…More than Meets the Eye!
An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the ”substantially identical” standard of 35 U.S.C. § 252?
This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.
Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims. Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road. Read the rest of this entry »
Hedging against post grant invalidity
Would you ever file a patent application without dependent claims? I wouldn’t….and for obvious reasons. Dependent claims help present more detailed aspects of a claimed invention. In the prosecution context for example, dependent claims present a variation in claim scope to the examiner. Once searched by the patent examiner, in many cases dependent claims are identified as allowable and provide a simple amendment option, often leading to patent issuance. Likewise, once issued as a patent, dependent claims provide more detailed fallback positions that serve as a hedge against an invalidity attack. It is a rare patent indeed that issues without dependent claims.
Yet, there exists another form of claim that also provides a narrowed presentation of inventive features that is increasingly avoided in patent applications; the means plus function claim. Many practitioners now advocate the avoidance of such claims, but why?
Well, for one, litigators prefer broader, non-mpf claims. Likewise, mpf claims complicate an infringement case due to their unique claim construction rules. Still others will point to recent case law finding such claims indefinite. Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (Fed. Cir. 2008)
While these criticisms are valid, lost in the debate is the fact that in many cases such claims are more likely to withstand invalidity challenges, such as during patent reexamination….isn’t that the point in having narrower claims?
Read the rest of this entry »
Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.
Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.” As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.
Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues? Read the rest of this entry »
Did the Patent Holder Miss the Boat on Claim Interpretation?
On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.
In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.
While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.
Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose. Read the rest of this entry »
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