Confirmed Dependent Claims Confuse Court?It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay. In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice. At page 4 of the decision, the court explained:Defendants sur-reply that contrary to Plaintiff’s assertions, all of the claims in the Plaintiff’s patent are “virtually certain” to undergo further changes, even the ones that Plaintiff has identified as affirmed. Dkt. No. 101 at 2. Defendants point out that the four independent claims, claims 42 to 45, have been rejected and that claims 46 through 53 depend from those independent claims. Thus, claims 46 through 53 has to “either be amended to independent form, or be made to depend on a new independent base claim” for those claims to be allowable. (emphasis added)This is absolutely not the case. Unlike regular prosecution, it is improper to object to an allowable dependent claim by virtue of a dependency to a rejected base claim. There is never a need to amend such claims. As explained in MPEP § 2260.01.If an unamended base patent claim (i.e., a claim appearing in the reexamination as it appears in the patent) has been rejected or canceled, any claim which is directly or indirectly dependent thereon should be confirmed or allowed if the dependent claim is otherwise allowable. The dependent claim should not be objected to or rejected merely because it depends on a rejected or canceled patent claim. No requirement should be made for rewriting the dependent claim in independent form. As the original patent claim numbers are not changed in a reexamination proceeding, the content of the canceled base claim would remain in the printed patent and would be available to be read as a part of the confirmed or allowed dependent claim. (emphasis added)Rather than pointing this issue out to the court during oral argument to aid in justify the lifting of the stay, unfortunately, shortly after the briefing concluded….the Patentee placed all of the dependent claims in independent form in a December 2010 amendment.( This was done despite the fact that the office, correctly, made no such requirement).Here the stay may very well have remained in place based on other factors beyond the scope of reexamination issue. However, the ability to point out that the claims will not change and that the defendants argument is wrong may have persuaded the judge to lift the stay. Instead, the Patentee now has to wait until September before seeking another reconsideration of the issue. As pointed out previously, this amendment mistake is quite common, and can often times have significant impact on unexamined, intervening claims.This case was brought to my attention by the great Docket Navigator.
It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.
Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay.
In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice.
At page 4 of the decision, the court explained:
Defendants sur-reply that contrary to Plaintiff’s assertions, all of the claims in the Plaintiff’s patent are “virtually certain” to undergo further changes, even the ones that Plaintiff has identified as affirmed. Dkt. No. 101 at 2. Defendants point out that the four independent claims, claims 42 to 45, have been rejected and that claims 46 through 53 depend from those independent claims. Thus, claims 46 through 53 has to “either be amended to independent form, or be made to depend on a new independent base claim” for those claims to be allowable. (emphasis added)
This is absolutely not the case. Unlike regular prosecution, it is improper to object to an allowable dependent claim by virtue of a dependency to a rejected base claim. There is never a need to amend such claims.
As explained in MPEP § 2260.01.
If an unamended base patent claim (i.e., a claim appearing in the reexamination as it appears in the patent) has been rejected or canceled, any claim which is directly or indirectly dependent thereon should be confirmed or allowed if the dependent claim is otherwise allowable. The dependent claim should not be objected to or rejected merely because it depends on a rejected or canceled patent claim. No requirement should be made for rewriting the dependent claim in independent form. As the original patent claim numbers are not changed in a reexamination proceeding, the content of the canceled base claim would remain in the printed patent and would be available to be read as a part of the confirmed or allowed dependent claim. (emphasis added)
Rather than pointing this issue out to the court during oral argument to aid in justify the lifting of the stay, unfortunately, shortly after the briefing concluded….the Patentee placed all of the dependent claims in independent form in a December 2010 amendment.( This was done despite the fact that the office, correctly, made no such requirement).
Here the stay may very well have remained in place based on other factors beyond the scope of reexamination issue. However, the ability to point out that the claims will not change and that the defendants argument is wrong may have persuaded the judge to lift the stay. Instead, the Patentee now has to wait until September before seeking another reconsideration of the issue.
As pointed out previously, this amendment mistake is quite common, and can often times have significant impact on unexamined, intervening claims.