Scott McKeown

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goodfellas_painting-smallg class=”size-medium wp-image-1043 alignleft” title=”goodfellas_painting-small” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/goodfellas_painting-small-241×300.jpg” alt=”goodfellas_painting-small” width=”241″ height=”300″ />–A Tale of Two Statutes —

When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas.  In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows:  Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? “

When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.

It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications.  Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]

In this regard, MPEP 2258 (II) notes that:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . .  (emphasis added)

The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with
Continue Reading USPTO Reexamination of Means Plus Function Claims

PLI-Logoass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”232″ height=”131″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and…

As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV)

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Fashioning New and Improved Weapons?

Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts.  In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees.  At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.      

More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC.  In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid.  These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009.  To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).[1]

Why the inconsistency between the two government bodies?

In short, the standards of proof are different, as are the rules of claim interpretation.  In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity.  In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.[2]  

So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?  

It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status.  If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding.  If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on.   However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®.
Continue Reading The Rambus Patent Rexaminations

–Concurrent Litigation a Driving Force– The USPTO has released their year end statistics for ex parte and inter partes patent reexamination.  The ex parte statistics may be found here, the inter partes here.  Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the…

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part II of IV)

On December 15, 2009, Chief Judge William K. Sessions III of the United States District Court for the District of Vermont denied a stay in the patent litigation between Synventive Molding Solutions, Inc. (“Synventive”) v. Husky Injection Molding Systems, Inc. (“Husky”), Case No. 2:08-cv-136. Husky had filed a motion to stay the patent litigation based…

In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination.  In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple.  Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed. What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent?  This may be the case, for example,
Continue Reading To Search or Not to Search (for prior art) When Contemplating Whether to Provoke an Interference

In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.”  Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears.  One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference.  In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application.  See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).   A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit.  In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim
Continue Reading “Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?