Is it Possible to Comply with Larson Manufacturing?

Two weeks ago, we discussed the merger of concurrent post grant proceedings relating to the same patent at the USPTO.  In addition to concurrent proceedings of a same patent, it is also quite common for entire portfolios of a Patent Owner to be subject to reexamination.  In such cases, the reexamination of different patents (including direct continuations of one another) are not merged.  Likewise, there may also be ongoing continuation patent application examination (i.e., patent applications claiming subject matter directed to the same invention in applicant’s earlier filed patent and meeting the conditions of section 120 of the patent statutes) being examined concurrently with the parent patent in reexamination.  However, reexamination proceedings are not merged with non-reissue application examination.

In such concurrent proceeding situations, what are the obligations of the Patent Owner in satisfying the duties of disclosure, candor and good faith?

The later situation noted above was very recently analyzed in Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir 2009).  In Larson, the court found that certain Office Actions in an ongoing continuation patent application examination, which were not cited during a concurrently prosecuted reexamination of a related patent, were material information required to be cited in the reexamination proceeding.  The Federal Circuit remanded the case for a determination on intent before arriving at a conclusion of whether inequitable conduct was committed by the attorney representing the patent owner in the reexamination proceedings.

In arriving at the determination of materiality, the court cited the Examiner of the continuation application’s opinions in the Office Actions with respect to the applicability of the prior art common to both proceedings as being information that was inconsistent with or refuted the position that the patent owner was arguing for the patentability of substantially similar claims in the reexamination proceedings, relying upon the holding of Dayco Products See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003) (contrary decision of another examiner reviewing substantially similar claims is ‘material’); See Also MPEP 2004 (note 9).

Based on the Larson holding, it is clear that the lack of citation of Office Actions of a related patent application examination in a reexamination proceeding may satisfy the materiality requirement of an inequitable conduct allegation.  When handling a reexamination proceeding for a patent owner, the obvious solution to this problem is to provide the Office Actions of pending continuation patent applications to the Office.  Yet, in 2008, prior to the Larson holding, MPEP § 2282 (for ex parte reexaminations) and MPEP § 2686 (for inter partes reexamination) were amended to provide apparently contradictory guidance:

. . .It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. (emphasis added)

Based on this language, the Office has published guidance, prior to Larson, that is now inconsistent with the direction provided by the Federal Circuit.  The Larson holding did not address whether mere citation of the continuation application by patent application number and status would have sufficed.  Yet, in view of Dayco, it is likely that the inequitable conduct charge would have been made by the accused infringer nevertheless.  As such, the current language of MPEP § 2282/2686 appears to place practitioners in an ethical quandary when trying to comply with the duty of disclosure and the conditions set forth in this MPEP section.

Part II of this series will be presented next week and analyze Third Party Considerations in view of § 2282/2686, namely, the evolution of these sections in view of abusive third party tactics.