December 2011

BPAI Reverses Rejections on CAFC Claim Construction

The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM.  The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation.  However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.

Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).

The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims.
Continue Reading NTP Patents Resurface from USPTO Reexamination

Prioritized Examination Program Expanded to Include RCE Filings

While not a typical post grant topic, prioritized examination (PE) is another feature of the recent America Invents Act that may be of interest to those with high value applications stalled at the USPTO.

As a reminder, PE under the AIA is essentially a codification of the USPTO’s track 1, Enhanced Examination Timing Control Procedures Initiative. Until passage of the AIA, and the increased funding that came along with the 15% surcharge, the Track 1 program was suspended. Thereafter, the Office began accepting requests for PE.

PE allows, as the name implies, examining certain applications out of turn based on a priority status and be disposed of within 12 months. That is to say, upon payment of a fee of $4800 for large entities, $2400 for qualifying micro entities, “priority” can be purchased. There is a cap of 10,000 such requests for any one fiscal year. Judging by initial filing rates (300 per month) that number is not likely to be exceeded.

Previously, applications undergoing prosecution, such as those at the RCE stage could not participate in this program….which makes sense in that there is no value in jumping to the head of line if already there. Why anyone would feel the need to pay such a hefty fee for a case already being examined is beyond me, yet the USPTO has provided for that eventuality in yesterday’s final rule publication in the Federal Register .…

Continue Reading USPTO Expands Prioritized Examination Program

Determination of Non-Obviousness by USPTO Disregarded by Court

Last week’s CAFC decision in In re Construction Equipment decided the validity of U.S. Patent 5,234,564…..again. In the first appeal, decided in 2001, the CAFC upheld the validity determination of the District Court. In the second appeal, decided last week, the CAFC considered an appeal from the USPTO rejecting the claims of the ‘564 patent in ex parte patent reexamination. In their second decision, the CAFC found the ‘564 Patent invalid in light of some of the very same prior art references at issue in the first appeal.

In her dissent Judge Newman questioned the constitutionality of the USPTO looking over the shoulder of the CAFC.

In a case of “turnabout is fair play,” last Friday, a United States District Judge for the District of Connecticut considered, and disregarded, the USPTO’s reexamination analysis of the same prior art in Jacobs Vehicle Equipment Co. v. Pacific Diesel Brake Co. et al. (D.Conn).…

Continue Reading District Court Rejects USPTO Analysis in Patent Reexamination

CAFC Appeal Result Undone 11 Years Later

Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date.

On the other hand, ex parte patent reexamination (EXP) has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for ex parte patent reexamination. In this way, the infringer could attempt to “undo” the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing.

As I explained this past August, the CAFC questioned this “do-over” practice during the oral argument of In re Construction Equipment. Last week the CAFC issued a decision in this case. In the process, the CAFC disturbed the holding of their first decision, issued some 10 years earlier.…

Continue Reading Judge Newman Questions Constitutionality of Second Chance Patent Reexamination

Infringement Defendant Attempts to Prevent/Undo Patent Issuance by APA Action

On Tuesday the CAFC heard arguments in the case of Pregis Corporation v. Kappos and Free Flow Packaging Intl. At issue in this case was a cross appeal of under the Administrative Procedure Act (APA) alleging that the USPTO had issued U.S. Patent 7,361,397 in an arbitrary and capricious manner. The ‘397 Patent is directed to plastic film used in machines that manufacture the now ubiquitous air pillows found in shipping containers.

Yet, rather than going through the time and effort to necessary to sue a government agency on a seemingly novel cause of action, why didn’t appellant Pregis simply seek reexamination of the ‘397 Patent? …
Continue Reading Can the USPTO Be Sued Under the APA for Issuing Bad Patents?

USPTO Considers Record Number of Requests for Patent Reexamination 

In fiscal year 2011 the USPTO initiated a total of 1133 patent reexamination proceedings (both ex parte and inter partes). The 2011 tally represents an overall increase in filings of about 7% relative to 2010 numbers.

Interestingly, while ex parte filings receded slightly, inter partes filings surged by 33% relative to 2010. In FY 2011 374 requests for inter partes patent reexamination were filed.

USPTO statistics for 2011 are found (here)

Ex parte patent reexamination proceedings are typically disfavored over inter partes reexamination proceedings as being too one-sided, and historically biased in favor of patent holders. Likewise, as patent reexamination is increasingly employed as a litigation tool, it is not surprising that the more robust proceeding is now…

Continue Reading Record Patent Reexamination Filings in 2011

Group 2 Rules to be Published in January

The Patent Public Advisory Committee (PPAC) convened yesterday at the USPTO for their quarterly meeting. During the meeting, the USPTO presented an update on office operations and AIA implementation status. The update on the Group 2 rule making is found in the presentation materials of Janet…