May 2010

 

thinkingRejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The ‘802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.

The BPAI affirmed the rejection of method claims 12-15 of the ‘802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed…kinda
Continue Reading Failure to Identify Specification Structure a Non-Starter for BPAI

USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner…

Safety-Signs-1065A-lg1-300x300Previously, we explored what types of amendments to claims under post-grant review can trigger intervening rights.

As you may recall, claim amendments in current post grant proceedings at the USPTO (i.e., reexamination/reissue) create intervening rights. 35 U.S.C. 307 (ex parte) and 35 U.S.C. 316 (inter partes) describe the impact of amending claims in patent reexamination, incorporating 35 USC 252 (relating to intervening rights in reissue applications). In essence, the doctrine of intervening rights forecloses the recovery of past damages for patent infringement if a claim is amended after issuance of the patent.

The case of Kim v. The Earthgrains Co., k/n/a Sara Lee Bakery Group Inc., 01-cv-3895 (N.D. Ill.), presented the issue of whether a change in the transitional phrase (i.e., legally operative terms) of a patent claim could trigger intervening rights.
Continue Reading Change in Transitional Phrase Can Trigger Intervening Rights

 

bloksAs a review for new readers, some IPR basics.

Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent.  Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents.  Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added.  There are two types of reexamination proceedings: ex parte and inter partes.  An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action.  The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse
Continue Reading The Benefits of Inter Partes Patent Reexamination

hammerUnlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.

A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed.
Continue Reading Shielding an Expert Declarant in Patent Reexamination from Deposition in Concurrent Litigation?

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

anti-ms2As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable…
Continue Reading Microsoft Just can’t Catch a Break in Patent Reexamination

Part II of a Guest Post by Brad Pederson

This is the second post addressing transition provisions outlined in the Manager’s Amendment to S. 515.  The first post addressed the transition provisions for interferences.  This post comments on the transition provisions for inter partes review.

Inter Partes Reexamination to Post Grant/Inter Partes Review – the transition provisions for switching over from the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB) contemplates a graduated ramp up with limits on the number of reviews that can be declared under regulations to be promulgated by the Director.  Sections 5(c)(2)(C) and 5(f)(2) of the Manager’s Amendment to S. 515 permit the Director to impose “a limit on the number of [reviews] that may be instituted during each of the first 4 years” following the cutover over date to FTFG.  While such a graduated transition would certainly be beneficial for the Office and the PTAB to learn how to handle these new review proceedings, the glaring question left open by these transition provisions is what happens to those requests for review that are above the cutoff …
Continue Reading USPTO Patent Reform Implementation, Hurry Up & Wait?

The Importance of Interview Summaries in ex parte Patent Reexamination

Last Friday, Star Scientific (hereinafter “Star”) released an update on their ongoing ex parte patent reexaminations of U.S. Patents 6,425,401 & 6,202,649. The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.[1] As Star is a publicly traded company, and the litigation is fairly high profile, the update was widely reported to outlets such as the Wall Street Journal and CNBC.

The Star press release explained:

We received notice today from the US Patent & Trademark Office that it was terminating the reexamination of Claims 4, 12 and 20 of the “649” patent and claim 41 of the “401” patent that had been requested by RJ Reynolds in early 2009. The reason cited for the termination of the process was that the patent owner’s response to the Nonfinal Office Action that was filed on 11/10/09 allegedly did not include “a [separate written] summary of the interview, as is required by 37 CFR 1.560(b).” We want to make clear that the claims were not cancelled because reexamination of the claims found them invalid, but rather because the PTO asserted the patent owner did not comply with the procedural requirement for providing a written interview summary. The reexamination proceeding “is subject to reopening by the [Patent & Trademark] Office, or upon petition,” and Star’s patent counsel will file petitions today to reopen the proceedings.

We disagree with the termination in the strongest possible terms, and we are taking all necessary actions to reopen the reexamination process. Star’s patent counsel, Banner & Witcoff, believe that all appropriate steps were taken during the reexamination proceedings. The PTO failed to acknowledge a timely written summary of the interview that had been filed within one month from the date of the interview. The firm is confident that the petitions to reinstate the proceedings will be granted so that the claims can be evaluated on their merits.

Upon review of the Star reexamination file histories, I will at least agree that the terminations have nothing to do with validity.

On the other hand, in my opinion, appropriate steps were clearly not taken during the reexamination proceedings. Likewise, the petitions filed last week will almost certainly be denied.
Continue Reading Learning From the Mistakes of Star Scientific