In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.” Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears. One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference. In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009). A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit. In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. Notably, both Agilent and Philips were appeals from a district court 35 U.S.C. §146 action. In a 146 action, parties may present new evidence to the district court that conflicts with the interference record before the Board of Patent Appeals and Interferences. The district court must make de novo factual findings regarding this new evidence. Ex parte patent applicants can also avail themselves of district courts and additional fact finding pursuant to 35 U.S.C. § 145. In a 145 action, “[T]he district court must defer to the PTO’s fact-finding except where appropriately admitted new evidence conflicts with a fact found by the PTO or presents a new factual issue that the PTO did not consider.” Hyatt v. Doll, 576 F.3d 1246, 1273 (Fed. Cir. 2009). Should the patent laws be revised to provide parties to an inter partes reexamination the option to take a mulligan in district court? I would suggest not. Although a 35 U.S.C. §145 type of action would afford the patent owner and/or the third party requestor an opportunity to supplement/rebut the PTO’s factual record, such an opportunity would likely lead to party abuses (e.g., sandbagging by the patent owner and undue delay by the third party) and wasted judicial resources. A more attractive alternative to implementing a 35 U.S.C. §145 type of proceeding for inter partes reexaminations would be the revision of the patent laws/rules governing case management of inter partes reexamination at the PTO. Practitioners generally agree that employing case management techniques similar to the case management techniques employed by the Trial Division of the BPAI would be a good start. Any new case management system should strive (i) to reduce delays created by petitions practice, (ii) to reduce the number of factual disputes, and (iii) to streamline the record presented to the CRU for “examination” and the BPAI for appeal.
