Manner of Amendment Obscures Claim Meaning
Back in October of last year I explained the recently concluded patent reexamination of Card Activation’s U.S. Patent 6,032,859. In the previous post, I discussed that placing confirmed/allowed dependent claims in independent form was unnecessary in patent reexamination.(MPEP 2260.01) While this procedural nuance would seem fairly trivial, the manner of making amendments can have significant impact outside the USPTO.
In the case of the Card Activation reexamination, claims 20 and 29 (independent) were amended to include the features of confirmed claims 21 and 32. That is to say, claims 21 and 32 could have simply been retained in their current form, without the need to amend the base claim. At the time, I explained that Card Activation may have unnecessarily narrowed other dependent claims, which could result in an intervening rights defense.
Last week, the Delaware District Court considered the manner of this amendment in an altogether different context. The Court found the amended claim lacking written description support on summary judgement, and in the process, shed some light on the seemingly short sighted choice in amendment style.
Read the rest of this entry »
USPTO Posts Public Comments on Patent Reexamination Streamline Proposals
As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will now begin the process of considering to implement/modify the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)
The deadline for submitting comments to the USPTO was last Wednesday. Comments submitted to date can be found posted (here). (Note: AIPLA and ABA comments are not yet available as they are still being drafted.)
I am pleased to report that several proposals published on this blog (and submitted separately on behalf of my firm) have been adopted by the IPO, Intellectual Ventures, and other bar organizations.
When Inter Partes Patent Reexamination Becomes One Sided
As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).
Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. Most recently, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination.
Earlier this month, I explained the presentation I gave at the USPTO public meeting of June 1st for accelerating petition processing. As most practitioners realize there is a petition crisis at the USPTO that is a direct result of the increased use of inter partes patent reexamination. In my previous proposal on this topic I explained that certain, procedural disputes are commonly petitioned in inter partes patent reexamination. For example, petitions relating to page limits, petitions to strike filings, etc. The Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals.
In addition to processing such seemingly routine petitions in a different manner, the Office should also consider eliminating situations that generate such petitions as a matter of course. Read the rest of this entry »
Public Notice Function of Interview Summary Attacked by Nokia
In ex parte patent reexamination, the Patentee may “interview” the examiners in charge of the reexamination in an effort to advance the prosecution of the case. In most cases, the interview is scheduled to last one hour, during which time the Patent Holder may present amendments, explain their invention, attempt to distinguish their claims over the art of record, etc. At the close of the interview both the examiners and Patentee prepare and file a summary of the discussion for the public record. As discussed previously, the failure to provide an interview summary can have serious consequences for Patentees.
Of course, an interview summary is not a transcript as is the norm for oral hearings in litigation settings. Instead, it is a high level overview of the discussion between the Patentee and the examiners. Yet, as long as the summary is accurate and competently prepared by both sides, the public is well served by this practice.
Still, as many patent reexaminations are now conducted in parallel to litigation, not surprisingly, the lack of an interview transcript is often played up in court by third parties. It is not uncommon for patent reexamination counsel to be subpoenaed and questioned on the interview discussion, motions filed to require the interview be recorded, or even a rare subpoena issued to a USPTO examiner.
Most recently, in Apple’s battle with Nokia, the adequacy of the USPTO interview record was called into question. Read the rest of this entry »
Interference Model to Control Petition Explosion & Manage Filings
Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.
To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305) was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.
My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that Read the rest of this entry »
Rare Victory in Patent Reexamination
Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. A common form of declaration evidence introduced in patent reexamination, although only rarely successful, attempts to identify objective evidence of non-obviousness. MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.
–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts
As discussed in past posts, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively identify a nexus between this evidence and the patented claims. Occasionally, however, evidence of secondary indicia of non-obviousness can be the difference between winning and losing. Read the rest of this entry »
June Meeting to Consider Proposed Changes
As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)
The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).
A short overview of each proposal is detailed next: Read the rest of this entry »
USPTO Vacates Reexamination Certificate Cancelling All Claims?
Typically, a patent reexamination proceeding is terminated after a patentability determination of the USPTO. Termination may occur during the prosecution phase or after the appeal phase is concluded. Occasionally, a patent reexamination is terminated based upon a failure of a Patentee to present timely filings. Once terminated, a certificate is published informing the public of the outcome of the patent reexamination proceeding (i.e., claim changes/cancellations).
For those terminations caused by the failure to present a timely filing, such as an interview summary (ex parte) or a response to an office action, it is possible to petition under 37 CFR § 1.137(b) to have the late papers entered and the termination vacated; thereafter, the patent reexamination proceeding continues.
But what if the petition is not filed until months after the initial termination, and after the printing of a certificate informing the public that all claims of the patent have been cancelled?
The answer might surprise you. Read the rest of this entry »
Confirmed Dependent Claims Confuse Court?
It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.
Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay.
In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice. Read the rest of this entry »
Patent Reexamination Cited in Government Brief to Supreme Court
As noted last week, the amicus briefing in support of respondent i4i was due last Friday at Supreme Court (Microsoft v. i4i). In i4i’s brief, it was emphasized that by providing the patent reexamination statutes, Congress has tacitly acknowledged the clear and convincing standard. In other words, by providing an alternative USPTO forum in which the clear and convincing standard does not apply, the standard used by the district courts was well understood by Congress.
This theme was also emphasized in the amicus briefing, however some briefs seem to struggle with the standard to be used for evidence that may not be considered via patent reexamination Having failed in their patent reexamination efforts, this category of evidence is at the heart of the Microsoft dispute. Read the rest of this entry »
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