Patents Post Grant Blog

Notorious Portfolio Stands Gutted by USPTO

Today at 2PM, the CAFC will hear oral arguments in the patent reexamination appeals of NTP Inc. (Wall Street Journal article here). After years of prosecution and appeals through the PTO system, the NTP patent reexaminations of NTP v. RIM fame finally get their day in federal court.

As discussed last year, the USPTO rejected all but one of the previously adjudicated NTP claims. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected by the USPTO. These rejections were later affirmed by the Board of Patent Appeals & Interferences (BPAI).  Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

As to the newly added claims, these Read the rest of this entry »

Widely Asserted Patent Claim Held Invalid at USPTO

The Rambus patent portfolio is well known, if not notorious, in the semiconductor industry. Over the years, Rambus has aggressively pursued licensing deals with Infineon, Hynix, Samsung and others. More recently, Rambus has been on the offensive against industry stalwarts such as Broadcom, Freescale, LSI, MediaTek, nVidia and ST Micro. 

As with any high value patent disputes, concurrent patent reexamination proceedings have been initiated at the USPTO against the Rambus portfolio. While these proceedings have largely co-existed without greatly impacting the Rambus litigation juggernaut, that may change as appeal proceedings conclude at the USPTO. 

In a Board of Patent Appeals & Interferences (BPAI) decision today, a decision rejecting Rambus’ U.S. Patent 6,034,198 in view of certain prior art was affirmed.

Read the rest of this entry »

Dispute with USPTO Ripens for District Court?

As some may recall, in 2009 patent owner Sigram Schindler pursued a declaratory judgment action against the USPTO in the Eastern District of Virginia. (EDVA). The DJ action questioned the propriety of foreclosing district court review of USPTO action in the ex parte patent reexamination of Sigram’s U.S. Patent 6,954,453.

More specifically, the DJ action (previous discussion here) sought a determination as to whether the USPTO’s interpretation of 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a Patentee in an ex parte patent reexamination from obtaining judicial review of a decision of the Board of Patent Appeals & Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.

Rather than deciding the issue, the EDVA simply noted that the question was not yet ripe due to the absence of a BPAI decision. Yesterday, a decision issued (here) in the reexamination (90/010,017) affirming the examiners rejection of the reexamined claims. Seems like matters have ripened….. Read the rest of this entry »

Substantial Evidence Found Lacking in Rejection of Means-Plus-Function Claim

Yesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent. Read the rest of this entry »

Lear Doctrine Avoided by Metabolite?

In a post last week, it was reported that U.S. patent 4,940,658, the subject Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted) had withstood an ex parte patent reexamination challenge at the USPTO. Specifically, the BPAI reversed the examiner rejection of claims 13, 15-17 and 33 and refused to reconsider their decision in the face of a rare patent examiner request for rehearing (90/008,305).

Aside from the ongoing patent battle raging between Lab Corp. and Metabolite, there is also a contractual dispute before the United States Court of Appeals for the Tenth Circuit involving these same companies. Metabolite is arguing that Lab Corp. unlawfully terminated an earlier licensing agreement. In order to have lawfully terminated their agreement, Metabolite argues that Lab Corp. must prove their products do not infringe the ‘658 Patent, but they have lost this battle at trial. Likewise, Metabolite argues that if Lab Corp is attempting to argue lawful termination based upon patent invalidity (i.e., Lear Doctrine), the BPAI has recently disproven this theory as well. Read the rest of this entry »

Rare Examiner Request Filed for Patent of LabCorp Fame

U.S. Patent 4,940,658 relates to an assay for Sulfhydryl Amino Acids and methods for detecting and distinguishing Cobalamin and Folic Acid deficiency. This patent previously made headlines as the subject of the 2005 Supreme Court appeal that sought to explore the patentable boundaries of  “natural phenomena.” Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted). Specifically, the defendants argued that the patent related to detecting a natural phenomena, namely, a vitamin B12 deficiency.

In 2006, third party requester General Atomics sought ex parte patent reexamination of the ‘458 Patent.(90/008,305) Of course, as patent reexamination may only consider questions of validity that relate to patents or printed publications, statutory subject matter considerations were never at issue; instead, only prior art rejections were applied in the patent reexamination.

Initially, the USPTO rejected certain claims of the ‘658 Patent, forcing the Patentee to pursue the case to the BPAI (ex parte Competitive Technologies, Inc. and The Trustees of Columbia University (Appeal 2009-005519)). The BPAI reversed the examiner’s rejection of the claims in July of 2009. Once reversed, as per usual, the examiner was ordered to withdraw the rejections, and allow the patent to exit reexamination.

Instead, the examiner opted to file a very rare, request for rehearing. Read the rest of this entry »

Last thing I remember, I was
Running for the door
I had to find the passage back
To the place I was before – Hotel California

Back in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.

Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.

So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?

The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.

So, is this “do-over” tactic legitimate? Read the rest of this entry »

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. Read the rest of this entry »

Hisamitsu Pharmaceutical requested ex parte reexamination of only claims 1, 3 and 6 of its own U.S. Patent No. 7,034,083 (the “’083 Patent”) based upon certain prior art.  However, the USPTO ordered reexamination on all claims (i.e., claims 1-6) of the ‘083 Patent.

Generally, if a requester chooses not to request reexamination for a claim, that claim will typically not be reexamined. Yet, the decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office. See MPEP 2240; Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

During reexamination of the ‘083 Patent the Patentee placed the features of claim 2 into claim 1. In response to the amendment, the examiner again rejected claims 1 and 3-6 over a reference cited in the original prosecution. On appeal, the BPAI in Ex parte Yasukochi et al. affirmed the examiner’s rejection of claims 1, and 3-6.

In its decision, the BPAI refused to consider the appellant’s argument that the rejection of the claims over old art was improper, because it did not raise a substantial new question of patentability (SNQ), holding that the question of whether an SNQ exists is a petitionable issue and not an appealable issue.

In order to properly contest the new rejection, the patent owner should have Read the rest of this entry »

In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI,  (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.

Figure 1 – Trailer Life Magazine’s Spy Photograph

In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist, Read the rest of this entry »