Scott McKeown

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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.)

EDVA District Court Judge Payne denied the accused infringers’ motion to stay a patent infringement suit pending the outcome  of reexamination of the patents-in-suit in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-cv-620 (E.D.Va. March 31, 2010).   ePlus filed a patent infringement suit in May, 2009, against Lawson Software, Inc., and others

…

myrtle-beach-bigThe March 4, 2010 Manager’s Amendment to S. 515, known as the Patent Reform Act of 2010 may be substituted for the Senate Judiciary Committee-passed version of S. 515, and then be considered by the Senate as a whole prior to Memorial Day. It is expected that Senate Majority Leader Harry Reid (D-NV) will ask…

craps_20game_croppedUnited States District Court for the Northern District of California, San Francisco Division Judge Richard Seeborg issued an Order on April 26, 2010 denying a motion to stay Ultra Products, Inc. v. Antec, Inc. (Civil Action No. C 09-04255 RS) pending the outcome of a possible inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,133,293 (the “‘293 patent”). The ‘293 patent is directed to a modular computer power supply that is designed to reduce problems with personal computer cords. A decision on a refiled request for inter partes reexamination dated March 29, 2010 based on Neo-Power 480 materials has not yet been made by the USPTO. In his decision to deny the stay of the patent infringement litigation, Judge Seeborg weighed three factors. The first two factors involve whether a stay would unduly prejudice or present a clear tactical advantage to the nonmoving party and will simplify the issues in question and trial of the case. The third factor is whether discovery is complete and a trial date has been set. He concluded that taken together these factors weigh against a stay of the patent litigation. The judge exercised his discretion to deny the motion for stay on the basis that the stay would threaten
Continue Reading ND California Stay Pending Patent Reexamination Crapshoot Continues

In inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.

The ‘247 design patent claims a design for a data card.  The data card is rectangular in shape, has rounded corners, has a horizontal strip extending across one face, and includes a circular aperture, as shown in Figure 1 of the patent below:

fig1 The ‘247 patent illustrates different embodiments wherein the circular aperture is positioned at different locations on the data card.

During inter partes reexamination, the Examiner adopted the third party requesters proposed rejection, rejecting the sole claim of the ‘247 patent under 35 U.S.C. § 103(a), relying on Keller (U.S. Patent No. 6,196,594) and Drexler (U.S. Patent No. 4,711,996) as primary reference.

fig2

fig3

 

                   Fig. 1 of Drexler                       Fig. 1 of Keller

As can be seen above, neither primary reference shows a data card containing any type of aperture.  Instead, the Examiner sided with the requester,
Continue Reading BPAI Emphasizes Obviousness Test in Reversing Inter Partes Design Patent Reexamination

potluck1Patent reform changes to the post grant landscape seem inevitable with S.515 gaining traction.  As such, a brief review of other patent systems may shed some light on the mixture of provisions that may ultimately be offered in the U.S, and their degree of harmonization with other international post grant review mechanisms.

The following is a comparison of Reexamination/Invalidation Proceedings at the State Intellectual Property Office (SIPO) of the people’s republic of China to Inter Partes Re-examination Proceedings at the USPTO.  In contrast to the United States where invalidity can be determined by the Court or by the USPTO through Re-examination, the Chinese Patent Reexamination Board (PRB) has sole jurisdiction over patent validity issues in China.  The Courts do not have jurisdiction to invalidate a patent.  PRB decisions may, however, be appealed to the Beijing People’s Intermediate Court, and further appealed to the Beijing People’s High Court.

SIPO

USPTO

Interpartes Proceeding?

Yes

Yes

Third Party Requestor?

Yes

Yes, unless estopped

under 35 USC 317

Real Party in Interest?

No

Yes

Time for Request?

Yes

Yes

Period granted for response?

One month non-extendable

One to two months

Oral Proceedings permitted?

Yes

No, only on appeal in BPAI.

Grounds for Request?

Novelty, inventiveness, practical applicability, enablement, written description, patent eligible subject matter, double patenting and claim clarity (Reg. 64(2))

Novelty, Non-obviousness and Double Patenting

Limited to patents and printed publications.

Grounds limited to requested claims?

Yes

Yes

Narrowing amendments permitted?

Yes

Yes

New grounds against amended claims?

Yes

Yes

Panel?

Patent Reexamination Board – a sole member or a 3-5 member panel.

· PRB includes Commissioner of SIPO and Deputy Director

· Majority vote

Central Reexamination Unit -three primary examiners

· CRU includes SPE

· consensus

Right to Appeal?

Yes, within 3 months of decision

· Appeal is to the Beijing People’s Intermediate Court

· Further appeal is to the Beijing People’s High Court

Yes

· Appeal to BPAI

· Further appeal to the Federal Circuit within 60 days after BPAI decision.

Efficiency/ Total time to complete?

Two years to complete on average

Three years to complete on average, 5-8 years with appeal

Usage?

~ 2% of granted patents

~ 0.1% of granted patents

In Japan, since January 1, 2004, the Japan Patent Office (JPO) has conducted
Continue Reading Comparison of Current U.S. Inter Partes Reexamination Proceedings to Asian Practices

trend

Senate Judiciary Chairman Patrick Leahy (D-Vt.) is pushing Senate leaders to bring the Patent Reform Act of 2010 (S. 515), as amended March 4, 2010, to the Senate floor before the Memorial Day recess. Internet reports have Senate Majority Whip Richard Durbin (D-Ill.) stating that Leahy would like Senate leaders to vote on S.515 after…

DepartmentYesterday, the Dept of Commerce released their position paper on certain aspects of the proposed patent reform legislation. The paper outlines economic justifications for post grant review, citing the well known inefficiencies and cost of patent litigation. Interestingly, the paper points out that post grant review is expected to be 50-100 times cheaper than patent litigation.

Previously I discussed the potential of patent reform legislation to supplant traditional patent litigation. There is significant question in my mind on how the USPTO, based on current resources, can quickly and effectively transform from the current examiner based reexamination model to a system managed by the newly labeled Patent Trial and Appeal Board.

With the expanded role of discovery practices provided by the post grant proposals, statutory time line (12-18 months), and oral hearings it seems to me that the legislative proposals cannot plausibly
Continue Reading USPTO Supports Post Grant Aspects of S.515