Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel
The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”
By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).
As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan. Read the rest of this entry »
Parallel Litigation Settles, Now What?
With the vast majority of patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of Patentees is “what becomes of the patent reexamination once the litigation settles?”
In the case of ex parte patent reexamination, the answer is simple: the reexamination continues unaffected. Indeed, as demonstrated a few weeks back (In Re Construction Equipment, CAFC (2011)), the ultimate outcome of the ex parte reexamination can even effectively reverse an earlier decision of the CAFC.
On the other hand, if the pending reexamination is an inter partes patent reexamination (IPX), the answer will depend on the nature of the terms of the settlement agreement. In a best case scenario for Patentee, the IPX proceeding may be vacated altogether by operation of estoppel. Of course, to trigger IPX estoppel, the settling defendant/requester must agree to a consent consent judgement in the district court (not effective in the ITC as estoppel does not apply) that they failed to prove invalidity. In most cases, defendants are loathe to publicly admit defeat. Still, unwary Patentes may be walking away from significant opportunity if just swinging for the fences. Read the rest of this entry »
BPAI Reverses Rejections on CAFC Claim Construction
The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM. The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation. However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.
Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).
The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims. Read the rest of this entry »
Proper Petition Practice Especially Critical in Patent Reexamination
In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)
The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights. Read the rest of this entry »
Estoppel Effect of USPTO Decision Attaches Only After All Appeals Exhausted
Estoppel, as it relates to inter partes patent reexamination (IPX) proceedings and the new inter partes review (IPR) of the AIA, has been a topic of discussion here over the past few weeks. As if on cue, the CAFC has chimed in with a bit of clarification on the topic of (IPX) estoppel as it relates to 35 USC § 315.
The USPTO has maintained the position that IPX estoppel (35 USC § 317) only attaches after all appeals are exhausted. That is to say, the USPTO will not honor an intermediate court result to for the purposes of vacating an ongoing IPX, or denying a new request, by operation of estoppel. Instead, the USPTO awaits a final appeal decision (or time for filing of such to pass). The Office has not had much opportunity to comment on the complimentary statute § 315 (c), which provides the estoppel effect of a USPTO decision on the district courts. This analysis was performed this past week by the CAFC. Read the rest of this entry »
Inter Partes Patent Reexamination is Not Always the Best Choice
In the case of Inventio AG v. Otis Elevator Co. (SDNY), the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination of the USPTO seemingly demonstrated the potential invalidity of the subject patent. Interestingly, this type of strategic, post-trial benefit of a concurrent patent reexamination is not available if the parallel patent reexamination were an inter partes patent reexamination.
That is to say, in considering the choice between ex parte and/or inter partes patent reexamination, post trial, or late stage litigation strategies must take into account the unique estoppel provisions of inter partes patent reexamination. Read the rest of this entry »
Is Appeal Pendency Really Reflected in USPTO Pendency Figures?
In considering whether or not to stay a parallel litigation in view of a pending patent reexamination the court will consider several factors. One of the more hotly contested factors is whether the stay will unduly prejudice, or present a clear tactical disadvantage to, the non-moving party.
While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. For example, it has been argued, successfully at times, that a delay that is not merely lengthy, but potentially indefinite is prejudicial to the non-moving party. For this reason, especially when it comes to inter partes patent reexamination, the average length of the proceeding can be instructive to the Court.
Hoping to convince the Court of a prejudicial delay, Patentees will argue that inter partes patent reexamination takes on the order of 5-7 years to complete through appeal. Defendants, on the other hand, will cite to published USPTO statistics that indicate inter partes patent reexamination pendency to be an average of 36 months, including appeal.
So, which party is manipulating the truth? Read the rest of this entry »
Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination?
On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. 2008-1511. The majority opinion authored by Chief Judge Randall Rader established a single new standard for determining materiality in inequitable conduct cases. This new “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.
Unlike the prior standard used in determining materiality of undisclosed information, the new standard assesses materiality on a preponderance of evidence burden of proof standard giving the patent claims their broadest reasonable construction in light of and consistent with the supporting patent specification. Presumably, because the majority opinion rejected the applicability of the USPTO’s materiality standard under 37 CFR § 1.56(b)(1), the new “but for” standard will take into account any rebuttable evidence that is proffered by the patent owner such as antedating non-statutory bar prior art and objective indicia of non-obviousness, irrespective of the fact that none of such rebuttal evidence was ever submitted to the USPTO for consideration prior to patent issuance.
A consequence of the new “but for” test for materiality is that, at least for those filings that include art forming the basis of an inequitable conduct defense to infringement, inter partes patent reexamination is now the more attractive option. Read the rest of this entry »
Inter Partes Patent Reexamination Petition Practice May Back Fire on Unwary Patentees
In inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.
On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.
As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis. Read the rest of this entry »
Delay in Case Schedule Allows for Amended Complaint
Previously, Voda v. Medtronic Inc., et. al. (OKWD) examined the impact of multiple requests for patent reexaminationin the context of a motion to stay. Early in the case the defendant Medtronic was able to secure a stay pending a first request for patent reexamination. Shortly thereafter, the reexamination concluded favorably to the Patent Holder and the stay was lifted. Next, the defendants filed a second request for ex parte patent reexamination, and then a third request along with a second motion to stay the case. The court denied the second motion explaining that the case schedule had already been delayed for some two years.
In a more recent decision (here), the plaintiff was able to add a further patent to the dispute by way of amended complaint. In permitting the amendment of the complaint, the judge once again explained that the defendants reexamination delay worked against them.
In considering the plaintiffs request to amend the complaint to add an additional patent, the court characterized the defendants delay argument as follows:
Defendants’ delay arguments are not well-taken, given that much of the delay that has occurred to date is the result of their filing serial reexamination requests before the PTO.
This case was brought to my attention by the great Docket Navigator.
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