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— Reducing  Infringement Liability Via
         Intervening Rights (PART I)–

As reported last week, USPTO reexamination of Amazon’s “1-click patent” concluded with the amendment of the broadest claims. In response, many Internet news sources, and IP blogs decried the reexamination process and the USPTO as a failed system. Yet, lost in the hysteria and naiveté is a very fundamental concept of post-grant proceedings at the USPTO, namely, the doctrine of intervening rights.

USPTO statistics very clearly bear out that complete cancellation of ALL patent claims via ex parte reexamination, such as was conducted of Amazon’s 1-click patent, is the exceptional case, not the rule.  Indeed, as of December 2009, only 11% of ex parte reexaminations conclude with all claims cancelled. Yet, roughly 600 requests for ex parte reexamination have been filed every year since the inception of the Central Reexamination Unit (CRU). With only 11% of patents having all claims cancelled over a 20+ year period, clearly the strategy behind ex parte reexamination requests is something other than outright cancellation.[1]

Certainly, a third party requestor would be pleased with the cancellation of all claims of a patent in reexamination, however
Continue Reading Flicking the Patent Reset Switch

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Mr. Raymond Mercado is a doctoral student in political science at Duke University

The Use and Abuse of Patent Reexamination

The presence of a threshold requirement (the “substantial new question of patentability” or “SNQ”) intended to protect patent holders from unwarranted reexamination proceedings reflects Congressional recognition that reexamination—like the patent application process—is susceptible to fraud and other misconduct.  Yet, whereas the literature and caselaw dealing with inequitable conduct by patentees is vast, there has been surprisingly little exploration of misconduct on the part of reexamination requesters.  My paper, The Use and Abuse of Patent Reexamination, attempts to fill this gap by examining the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders.

Suppose that a third-party requester were to fabricate or mischaracterize prior art, for example by misrepresenting the publication date of an obscure reference, deliberately mistranslating a foreign reference, altering the drawings and figures, or simply by proffering an elaborate but objectively unreasonable interpretation of the prior art. 
Continue Reading Recourse for Abuse of The Patent Reexamination Process?

amazon_craveass=”alignleft size-full wp-image-1626″ title=”amazon_crave” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/amazon_crave.jpg” alt=”amazon_crave” width=”181″ height=”119″ />Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com.  As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.  

In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed patentable over the submitted art of the request.

Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment.  This amendment was submitted to the USPTO in 2007.  It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right? 

Wrong

Yesterday the typical
Continue Reading Hobbits & Wizards –The Amazon 1-Click Reexamination —

uspto facesOn March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of  USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.

Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that
Continue Reading Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners

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With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding,
Continue Reading EPO Opposition Procedures, a Model for Post-Grant Review?

breakingnewsass=”alignleft size-full wp-image-1548″ title=”breakingnews” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/breakingnews.jpg” alt=”breakingnews” width=”162″ height=”123″ />As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here).  In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.

 A.  Post-Grant Review

Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of  § 282 (b).  Post Grant Review may be initiated ONLY within
Continue Reading POST-GRANT REVIEW CHANGES TO S.515

DrudgeSirenass=”alignleft size-full wp-image-1538″ title=”DrudgeSiren” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/DrudgeSiren.gif” alt=”DrudgeSiren” width=”50″ height=”69″ />As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered
Continue Reading DETAILS ON RENEWED PATENT REFORM EFFORT ARE REVEALED?

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Two weeks ago, it was widely reported that the BPAI upheld the reexamination rejection of the broadest claim of Pfizer’s US Patent 6,469,012 relating to Viagra®. Lost in the outrage over the 7 year pendency of the reexamination proceedings was the degree to which the Pharma industry stacked the deck against Pfizer, and how special dispatch seemingly ends at appeal.

The reexamination of the ‘012 patent was kicked off by the USPTO in 2003, identifying four substantial new questions of patentability (SNQs).  It is worth noting that in 2003, there was no such thing as a Central Reexamination Unit (CRU).  Instead, this patent reexamination went to the patent examining corps.  As most practitioners are aware, while the patent examining corps certainly has the technical expertise to handle such issues, special dispatch was far from assured. This deficiency, in part, led to the creation of the CRU in 2005. The CRU implemented a coordinated management of the USPTO’s reexamination caseload, and staffed reexamination proceedings with teams of three experienced primary examiners.

In addition to the initiation of the Viagra® reexamination in this period of USPTO transition, the Pharma industry implemented a strategy of
Continue Reading Stacking the Deck Against Viagra

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Another week, another patent litigation stayed in a California court pending a concurrent USPTO  reexamination.  This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis…

USA-COURT/SOTOMAYORass=”alignleft size-full wp-image-1512″ title=”USA-COURT/SOTOMAYOR” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/rtr25o04_comp.jpg” alt=”USA-COURT/SOTOMAYOR” width=”233″ height=”182″ />Earlier this month we noted that with the health care legislation seemingly losing steam, that there appeared to be movement on patent reform; yesterday those  suspicions were confirmed.  Senator Patrick Leahy (D –Vt) indicated at an executive business meeting on Thursday that a compromise bill on…