Scott McKeown

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untitled–Part I–

Since the storied emergence of the patent troll (non-practicing entity (NPE) for those preferring the multisyllabic, PC terminology), it is not uncommon for an entire industry to find themselves on the same side of the defendant fence of a patent infringement suit. Where the targeted industry includes a mixture of small to large competitors, it is especially common for smaller targets to form temporary litigation alliances amongst themselves, and with their larger, deep pocket competitors.

These alliances are memorialized as written contracts or “joint defense agreements” (JDA). The purpose of such agreements is to provide for a structured exchange of information for mutual defense benefit, and protect this communication from discovery requests under the auspices of the joint-defense privilege.

When such agreements are in place, and inter partes reexamination is sought as a concurrent litigation strategy, a common concern is the applicability of the estoppel provision of 35 USC § 315(c) to the co-defendants as participants of the joint defense.  As explained next, it is clear that the USPTO
Continue Reading Joint Defense Agreements & Inter Partes Patent Reexamination

plavixLast Friday the USPTO issued a Notice of Intent to Issue a Reexamination Certificate (NIRC) for U.S. Patent 4,847,265, directed to the well known blood thinner Plavix.®  The Plavix Patent was challenged by Apotex Inc, a Canadian manufacturer of a generic version of the drug.  

Apotex was unsuccessful in their challenge of the patent in…

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–Pick a Winner–

The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.

§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.  In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.  Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts
Continue Reading How will S.515 Impact Patent Litigation?

OopsSection 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription.  The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.

If these so called technical amendments were enacted into law applicants could  add or delete named inventors to correct an error in inventorship that was made with deceptive intent.  That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor,
Continue Reading Does Patent Reform Go Too Far in Eliminating Inequitable Conduct?

office-sign-brain–Procedural Alchemy–

The general policy of the USPTO is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. MPEP § 2686.03.  The reason for this policy is to permit timely resolution of both the reissue and the inter partes reexamination, to the extent possible, and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner.  If both a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the inter partes reexamination proceeding or to stay one of the two.[1]

Where a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.985.  See also MPEP § 1418.  In addition, the patent owner should file in the inter partes reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.985 to notify the Office in the inter partes reexamination proceeding of the existence of the two concurrent proceedings.

The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally
Continue Reading Merger Considerations in Patent Reissue and Inter Partes Patent Reexamination Proceedings

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–A Glitch in the Matrix?–

As noted in Part I of our series on intervening rights, claim amendments in reexamination and/or reissue at the USPTO may create absolute and/or equitable intervening rights. Although the doctrine of intervening rights is codified as a component of reissue statute 35 U.S.C. § 252, reexamination statutes 35 U.S.C. § 307 (ex parte) and 35 U.S.C. § 316 (inter partes) incorporate the reissue statute in this regard.

35 U.S.C. § 252 Effect of Reissue.

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent. (emphasis added)

As can be appreciated, 35 U.S.C. § 252 states that substantially identical claims are treated no differently with respect to liability (damages) than original claims.[1]

Of course, this provision begs the question:

What types of claim changes can be made
Continue Reading Intervening Rights & The Substantially Identical Standard

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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution.  Such inadvertant issues can currently serve to jeopordize an otherwise valid patent.  With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.

For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent.  The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent
Continue Reading Inoculate Your Patents from Inequitable Conduct Allegations?

expiredOn March 15, 2010, an expanded BPAI panel that included Chief APJ, Michael Fleming and Vice Chief APJ, Allen MacDonald rendered a decision on rehearing of an expired patent of the infamous Ronald A. Katz Technology Licensing L.P portfolio. The rehearing addressed the standard for claim construction in expired U.S. Patent No. 5,561,707. A copy of the decision is found (here).

The original BPAI decision contained a statement that, in construing the claims of an expired patent during a reexamination proceeding, “the claims will not be narrowed by interpretation not required by the claim language.”  The expanded BPAI panel clarified the statement made in the original panel decision by stating that “[i]t does not say that the claim terms cannot be interpreted using different words or limit the sources of claim meaning.”

The expanded panel agreed that
Continue Reading Expanded BPAI Panel Rehears Reexamination Decision on Expired Katz Patent

keyAs noted by USPTO reexamination statistics, the majority of recent patent reexaminations are also involved in concurrent litigation.  A recurring issue for litigants involved in such disputes is the fashioning of an appropriate protective order to adequately protect confidential materials. Such issues become particularly contentious in litigation between direct competitors.

Understandably, defendants typically seek protective orders providing  maximum protection of confidential materials, forbidding litigation counsel from using these materials in the prosecution of plaintiff’s patent applications. This prohibition known as a “patent prosecution bar,” is largely standard practice.  However, it is well established that patent reexamination does not involve “patent applications.” Thus, a thornier issue is presented when attempting to extend this bar to include barring participation by individuals with access to confidential information in ongoing reexamination proceedings.

Courts have taken divergent paths on the issue.  Some courts
Continue Reading Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware

top5ass=”alignleft size-full wp-image-1688″ title=”top5″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/top5.jpg” alt=”top5″ width=”116″ height=”114″ />Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over).  Until we can figure out a way to correct the calculation,…