Claim Interpretation Practices in Patent Reexamination

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. In past posts, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination. More recently, I have discussed changes to petition practice for accelerating petition processing, and avoiding common petition issues when a Third Party withdraws from an inter partes patent reexamination.

With June drawing to a close, and with public comments due to the USPTO on the Streamline Proposals due today (June 29, 2011), this will be my final post of this multi-part series.

In this post I explain how a relatively common claim interpretation deficiency is overlooked by the USPTO, leading to unnecessary reexamination proceedings and expense for Patent Holders.

Currently, the grant rate of patent reexamination is well over 90%. With patent reexamination increasingly initiated concurrent with district court and/or ITC litigation, the mere grant of a request for patent reexamination can have a devastating effect on the timeliness of patent enforcement efforts. For patents in inter partes reexamination, roughly 50% of cases in litigation remain subject to a stay pending the outcome of the patent reexamination proceedings for at least 4 years. Thus, an improvidently granted reexamination request can effectively shut the Patent Holder out of court for years, and significantly add to (1) the cost of enforcement and (2) the delay in collecting damages for patent infringement.

In analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means-plus-function” claims.

35 U.S.C. § 112 6th requires:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis added)

As further outlined by MPEP 2181-2183, it is impossible to examine a means or step-plus-function claim without considering the structure, material or acts described in the specification; otherwise there is no claimed structure or acts by which to compare any equivalence in the prior art. See MPEP 2183 (C)

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone.  In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims.  This practice encourages accused infringers in parallel litigations to pursue reexamination requests with little to no downside. That is to say, the Request can be devoid of any structural analysis relative to the patent and still be granted.  In this way, the accused infringer maintains all flexibility in the parallel proceeding with respect to arguing structural equivalents (i.e., non-infringement & invalidity).

The USPTO should not accept a Request for Patent Reexamination which would be dismissed as non-compliant if it were part of an Appeal Brief to the BPAI—an appeal brief requires this structural analysis explicitly. (CFR 41.37(c)(1)(vii)). Which makes perfect sense as any reasoned analysis requires analysis of the equivalent structure of the specification.

For this reason, many of these improvidently granted reexaminations ultimately terminate in favor of the Patent Holder, sometimes years later on appeal to the BPAI, where such structure is considered for the first time.

To avoid litigation gamesmanship, and to reduce Patent Holder harassment, it is incumbent upon the USPTO to require that means plus function claims be examined, from the outset, in accordance with the 35 U.S.C. § 112 6th paragraph guidance provided in MPEP § 2181-2183.