May 2010

zetiaSubsequent to the Ex Parte Tanaka BPAI decision (Appeal No. 2009-000234) on December 9, 2009, Judge Jose L. Linares of the U.S. District Court for the District of New Jersey granted partial summary judgment invalidating four claims in the Zetia Reissue Patent U.S. Reissue Patent No. RE37,721 that were added in the reissue application of U.S. Patent No. 5,767,115.  The reissued claims were directed to the active ezetimibe species, which was already encompassed by the original ‘115 patent claims to a genus of hydroxyl-substituted azetidinone compounds.  As we previously pointed out, reissue patent applications do not fix all errors. Here as in Tanaka, “bullet claiming” via patent reissue is once again disputed as an error that may be corrected by reissue.

The civil action, Schering Corp. et al. v. Glenmark Pharmaceuticals Inc. USA et al., (Case No. 2:07-cv-01334), was filed in 2007, after Mumbai based Glenmark filed an abbreviated new drug application
Continue Reading Zetia Patent Litigation Settles: Reissue Bullet Claims Questioned

clippy_buttonsAs has been widely reported this week, U.S. Patent No: 5,787,499 has been confirmed by the USPTO in ex parte reexamination 90/010,347. The patent has been widely reported as impacting the popular Microsoft Word software, and the subject of the dispute between i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx no. 07-CV-113). The favorable termination of the reexamination is not very surprising to those following the case as it is clear Microsoft’s use of reexamination in this case was to win a limited battle, not the war.

In our earlier post on the i4i patent reexamination, we noted that the request for reexamination was filed in November 2008. The request was granted in early 2009. Despite the fact that the Texas suit was initiated in early 2007, a request for reexamination was not filed until some 20 months later. In Texas, stays are not as commonly granted for patent reexaminations, certainly not to the extent of some of the more extreme districts. As such, it appears as though Microsoft determined the odds of obtaining a stay pending reexamination slim, and chose to follow the traditional litigation path; that is, right up until trial.

Based upon the briefing, it appears as though
Continue Reading Microsoft’s Late Use of Patent Reexamination in the i4i Dispute

It would be so nice if something made sense for a change — Alice (in Wonderland)

Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851).  Claim 1 recites the following elements:

A portable computer unit comprising:
(a) a portable computer housing;
(b) computer means positioned. . .
(c) flat panel display means interfaced to . . .
(e) closure panel means having. . .
. . .said computer housing means and said closure panel means
incorporating electrical connecting means adapted to . . . (emphasis added)

Curiously, the Patent Owner took the position that ONLY the electrical connecting means invoked 35 U.S.C. § 112 6th paragraph (i.e., means-plus-function-element). In other words, even though most other claim elements used the same style of “means” language, these features were somehow different.[1] Understandably, the examiner was perplexed as to the rationale for the distinction. As a result, it appeared that the Examiner instead applied a broadest reasonable interpretation to all of the elements that recited “means” language.

Although, in the end, the BPAI affirmed the examiner’s rejection, the decision was based on a means-pus-function interpretation.  In the decision, the BPAI noted at page 3:

The examiner has a point that it is hard to discern any principled difference between the way “means” is used in the claim such that one skilled in the art would understand that only one such use invokes paragraph 6. The ordinary remedy for such confusion is to reject the claim under 35 U.S.C. 112(2) for indefiniteness. The Office does not reject original patent claims in reexamination under § 112, however.

Next, in affirming the Examiner’s rejection of claim 1, the BPAI analyzed the claims under 35 USC § 112 anyway.
Continue Reading The Patent Reexamination Paradox of 35 USC 112

stemOn April 28, 2010, The USPTO’s Board of Patent Appeals and Interferences (BPAI) rejected claims 1-3 of Wisconsin Alumni Research Foundation’s (WARF) “Primate Embryonic Stem Cells” Patent (U.S. Patent No. 7,029,913, the ’913 patent).  The WARF patent is licensed to Geron Corporation and is subject to Inter partes Reexamination as Control No. 95/000,154.  The BPAI reversed the Examiner’s decision to allow the claims. The claims cover pluripotent human embryonic stem cells (ES) cultured in vitro. The request for inter partes reexamination of the ’913 patent was filed on July 17, 2006 by the Public Patent Foundation (PubPat) on behalf of The Foundation for Taxpayer & Consumer Rights (FTCR), now known as Consumer Watchdog. The BPAI decision does not affect two other WARF embryonic stem cell patents (U.S. Patent Nos. 5,843,780 and 6,200,806) that were challenged by FTCR in reexamination proceedings resulting in confirmation of the patentability of their claims in reexamination certificates. However, the rejection of the ’913 patent claims may have a reverberating effect on the stem cell industry. Following an order granting inter partes reexamination of the ’913 patent on September 29, 2006, the Examiner rejected claims 1-3 based on anticipation and obviousness rejections. However, in the Action Closing Prosecution
Continue Reading BPAI Rejects WARF Stem Cell Patent Claims in Inter Partes Reexamination Appeal

Guest Post by Brad Pedersen

With the recent announcement from the Obama administration supporting the Manager’s Amendment to Senate Bill S. 515 and with the possibility that the Bill could soon get to the Senate floor for a vote prior to Memorial Day, it is time to take seriously some of the details about transitioning from (i) the current interference/reexamination scheme to a new derivation/review scheme and (ii) 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).  This post is the first of a two part series and addresses the transition provisions for interferences. Interference to Derivation – Because S.515 will change the U.S. patent system from a first-to-invent (FTI) system to a first-inventor-to-file with grace period (FTFG) system, as was discussed in an earlier post, interferences will be replaced by a new “derivation proceeding” to determine whether the second applicant for a patent was in fact the first inventor to file for a patent.  Although, the Manager’s Amendment is a marked improvement …
Continue Reading USPTO Patent Reform Implementation, Fine Tuning & Interference (Part I)

arrow-pointing-two-directions-400x400Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal
Continue Reading District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)