Comments for Patents Post Grant Blog

Comment on Death by Amendment, Practical Impacts of Patent Reexamination Pendency by Paul F. Morgan

Paul F. Morgan — Wed, 08 Sep 2010 14:00:30 +0000

Speaking of PTO pendencies, the interference of Goeddel v. Sugano, No. 2009-1156 was just decided September 7, 2010
but Sugano’s claimed priority was a Japanese application filed in 1980 and Goeddel’s application was filed in 1989.
If this blog does intereference decisions, I’m puzzled why the Board made its [reversed] decision?

Comment on 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination by Scott A. McKeown

Scott A. McKeown — Mon, 06 Sep 2010 23:15:00 +0000

Thanks, it’s been awhile.

Comment on 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination by Scott Daniels

Scott Daniels — Mon, 06 Sep 2010 16:26:00 +0000

Those of us with friends in that “defunct” firm knew it as Pennie & Edmonds

Comment on 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination by Paul F. Morgan

Paul F. Morgan — Thu, 26 Aug 2010 17:10:05 +0000

Re: “the Patent Holder instead argued the reference was non-analogous art.”
The PTO was apparently not the only one asleep at the switch during this inexcusable 10 year reexam delay. In the meantime we had the Sup. Ct. KSR decision making mince-meat of “non-analogous art” arguments like this one.

Comment on Concluded Ex Parte Reexamination Results Ignored by District Court? by Scott A. McKeown

Scott A. McKeown — Fri, 20 Aug 2010 17:59:12 +0000

Scott/Paul,
I agree that the judge may be just going through the motions (no pun intended), I just don’t get how a court can “benefit” or be “cognizant” of such a result, directly on point, and not give it serious weight. It does not appear that Crestron did an especially good job emphasizing the issue, so, that may be part of the problem as well.

Comment on Concluded Ex Parte Reexamination Results Ignored by District Court? by Paul F. Morgan

Paul F. Morgan — Fri, 20 Aug 2010 14:37:06 +0000

Isn’t this inconsistent with Hewlett-Packard co. v. Bausch & Lomb Inc., 15 USPQ2d 1526, 1527 (Fed. Cir. 1990) stating that “the burden of showing, by clear and convincing evidence, the invalidity of [patent claims]” . . “is especially difficult when the prior art was before the PTO during the prosecution of the application.” ?

Comment on Concluded Ex Parte Reexamination Results Ignored by District Court? by Scott Daniels

Scott Daniels — Fri, 20 Aug 2010 12:00:36 +0000

Scott

It’s one thing for a trial court to say that it must make its own analysis (and perhaps arrive at a different conclusion from the PTO); it’s another for the court actually to do so. Experience in District Court cases with a parallel ITC investigation, shows that the level of deference shown by the trial judge to the ITC’s decision runs the gamut from great to none. In one instance, the trial judge announced that he “must make his own decision,” but then followed the ITC holding issue by issue.

Scott Daniels
Reexamination Alert
Westerman Hattori Daniels & Adrian

Comment on BPAI Streamlines Appeal Procedures for Inter Partes Reexamination by Scott A. McKeown

Scott A. McKeown — Wed, 18 Aug 2010 15:21:58 +0000

Paul,
Reexams are handled before regular prosecution appeals, however, I am unaware of reexaminations concurrent with litigation being advanced first. Also, most reexaminations, especially inter partes, seem to fall into that category so I am not sure such a practice would have much of an impact in any case.

My point with regard to the backlog was simply that even if this mechanism shaves a few months off of pendency, the BPAI’s growing case load may offset any gains. While the Board is handling reexams with special dispatch, increasing the workload will only make that dispatch less “special” over time. The backlog seems to be growing in all respects, reexamination as well.

Comment on BPAI Streamlines Appeal Procedures for Inter Partes Reexamination by Paul F. Morgan

Paul F. Morgan — Wed, 18 Aug 2010 15:03:04 +0000

Re: ..”with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.”
Did you mean total appeal numbers, or reexamination appeal numbers? Since the reexam statute expressly requires the Board to treat reexam appeals with “special dispatch,” I do not see any valid excuse for the Board taking up or processing any ordinary ex parte application appeals for decisions ahead of any undecided reexamination appeals. [Albiet the long delays for some reexam appeal decisions cast doubt on whether they are obeying the statute?]
Furthermore, the Board should obviously be specifically prioritizing reexamination appeals of patents in litigation ahead of other reexaminations. Is it?

Comment on How Long Does Patent Reexamination Really Take? by Scott A. McKeown

Scott A. McKeown — Tue, 17 Aug 2010 02:26:27 +0000

David,

I have never seen an examiner deliberately misfile an Answer Brief. Surely, the process can be frustrating when prosecution is reopened, still, such is usually a sign that the Patentee is making progress. In my experience an examiner has no reason to create additional work for his/herself.