A bit of “pre-grant” news today…. the USPTO has launched a new, internal pilot program entitled “After Final Consideration Pilot” (AFCP). The memo announcing the program to the Examining Corps outlines the purpose as: To advance the goal of compact prosecution, the following
When faced with the assertion of a patent of questionable validity prospective defendants increasingly resort to patent reexamination. Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement action pending a parallel patent reexamination is a major benefit of the USPTO proceeding.
For this reason, patent reexamination parallel to a district court is often initiated in an attempt to stay the more cost prohibitive court proceeding. In deciding whether or not to stay the court proceeding the courts look to many factors. (See factor based analysis here). When considering whether to stay the proceeding in view of an ongoing inter partes patent reexamination (IPX), courts often identify the estoppel provisions of IPX as supporting an argument that issues will be simplified for trial by awaiting the USPTO decision.
In an interesting twist on the special consideration given to IPX filings, a California district court considered the impact on the recent America Invents Act (AIA) change to the standard for initiating IPX.
Continue Reading AIA Change to Reexamination Standard Aids Motion to Stay
The page limit restrictions proposed by the USPTO for the new post grant proceedings of the America Invents Act (AIA) are quite severe. The currently proposed rules set a maximum 50 page limit for requests to initiate Inter Partes Review (IPR), and 70 pages for Post Grant Review (PGR). The page limits may be waived upon successful petition for additional pages, however, the Office has explained that such cases would be “exceptional.”
As if the page limits were not enough, the proposal also requires double spacing and a 14 point font (§42.24). These guidelines, taken together with the need to explain lengthy patent claims (up to 20 claims per request) and compare complex figures of the prior art, combine to present significant disincentives to the public. Simply stated, the “use it or lose it” nature of the statutory estoppel provisions of IPR and PGR are inconsistent with such restrictions. For example, to present more than a single proposed rejection in an IPR request directed to 10 claims or more would almost certainly exceed the 50 page limit.
As pointed out last week, the mean page count for an inter partes patent reexamination (IPX) is several hundred pages. IPR was formulated by Congress to replace IPX. As such, the Office’s administrative restrictions may very well frustrate the intent of Congress that these new post grant proceedings serve as a meaningful alternative to patent litigation (in which expert reports on validity and related pleadings may span thousands of pages).
An additional side effect of the proposed limits may be that filers present their proposed rejections across several requests filed in parallel.
Continue Reading USPTO Post Grant Rule Proposals to Force PieceMeal Practice?
Back in February, I noted the “interesting” decision of plaintiff EveryMD to file suit against the Republican presidential candidates. The suit, captioned EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich(C.D.CA) explains that U.S. Patent 7,644,122 is infringed by Facebook, and as business customers of
During a post grant proceeding, an amendment of an originally issued claim could create an intervening rights defense for potential infringers. That is to say if the amended or new claim introduced by the post grant proceeding is not substantially identical in scope relative to a previously issued claim, potential infringers of the amended/new claims may be provided with an absolute and/or equitable intervening rights defense (35 U.S.C. § 252).
Back in September, in Marine Polymer Technologies, Inc. v. Hemcon, Inc., the CAFC considered whether or not a claim needed to be explicitly (textually) amended to invoke the statute, or whether or not changes to claim scope based on prosecution history could have the same amendatory effect. The September panel ruled that an “amendment in effect” (i.e., disclaimer of claim scope) is equally effective in creating an intervening rights defense as an explicit amendment.
The panel decision was subsequently vacated in favor of an en banc review. In yesterday’s en banc decision, (here) the Court held (by a split-majority) that 35 U.S.C. §252 could not be invoked absent a textual change to the subject claim, explaining:
Continue Reading En Banc CAFC Reverses Intervening Rights Analysis
Previously, the substantially identical standard enunciated by 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). In the lower court ruling, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims. This was because, the claim changes made during patent reexamination added claim features the district court previously ruled to be embraced by the originally issued claim scope.
The lower court explained (decision here) that Aspex was barred from re-litigating these new claims against the previous defendants, reasoning:
The [previous action] was fully adjudicated on the merits. The dismissal release . . . made clear that the settlement dismissed with prejudice as to any causes of action “any claim which could have been had by and between the Parties arising from or connected with [the earlier dispute]. Plaintiffs argue that it alleged legally separate causes of action in their complaint because claim 23 and claim 35 [reexamination changes] did not exist at the time the [previous actions] were being litigated. The reexamination of the ‘545 Patent does not entitle Plaintiffs to circumvent claim preclusion because the amended claims relate back to the original ‘545 Patent reissue date. (emphasis added)
In affirming the lower court, the CAFC reasoned (decision here):
Continue Reading CAFC Denies Assertion of Claims Added in Reexamination
As discussed previously, the fees proposed to initiate for Post Grant Review (PGR) and Inter Partes Review (IPR) may be too cost prohibitive for many filers. Yet, perhaps more troubling than the proposed fee structure is the extreme page limits proposed for these proceedings.
The proposed rules set a maximum 50 page limit for requests to initiate IPR, 70 pages for PGR (inclusive of claim charts). The proposed rule explains that federal courts often impose page limits, and perhaps more importantly that the “Board’s experience” in patent interference leads the Office to believe that the current proposals are reasonable. The Office explains that the current page limit for prior art motions in a patent interference is 25 pages. Thus, the Office reasons that the doubling of this existing limit to 50 pages for IPR is quite reasonable.
The Office has borrowed heavily from patent interference practice in arriving at the proposed rules of procedural practice before the Patent Trial & Appeal Board (PTAB); this makes sense. However, one size does not fit all with respect to contested proceedings. There are important distinctions between a patent interference and an IPR/PGR. That is to say, the problem with the Office’s reasoning is that validity challenges in patent interference do not encumber challengers with statutory estoppel that extends to the federal courts; nor are such validity based challenges the focus of a patent interference (i.e., priority dispute). Indeed, as the very ownership of the patent rights are in dispute in a patent interference, there may be strategic reasons for limiting validity challenges.
Rather than gauging the proposed page limits for IPR and PGR on patent interference practices, it would make much more sense for the USPTO to look to the current practice in inter partes patent reexamination (IPX); the very proceeding being replaced by IPR. So far in 2012, the mean page count for IPX requests is 262….a far cry from the 50 pages proposed by the USPTO.
Continue Reading USPTO Page Limit Proposals Need Recalibration
The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions preclude a subsequent attempt to invalidate the same patent in a district court (at least based upon patents and printed publications).
For the new post grant proceedings of the America Invents Act (AIA) the same basic concept exists for requesters― one bite at the apple. However, the estoppel is triggered substantially earlier. In post grant proceedings under the AIA estoppel under 35 USC 315 attaches upon the issuance of a final written decision, which should occur around a year and a half from the filing of the petition for review in a typical case. In contrast, IPX estoppel attaches only upon issuance of the reexamination certificate, after exhaustion of all appeals to Article III courts.
Perhaps even more significantly, the proposed rules to implement the Post Grant Review and Inter Partes Review proceedings add a new layer of estoppel against Patentees.
The impact of this proposed change would be devastating for large patent filers.
Continue Reading USPTO Proposal to Destabilize Large Patent Portfolios
Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.
During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing…presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a “place holder” intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in “unforeseeable” ways.
The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent
Continue Reading CAFC Reverses USPTO on Patent Reissue Dispute
This past Monday, EveryMD filed suit against the Republican presidential candidates for…well..using Facebook. The suit, captioned EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich(C.D.CA) explains that U.S. Patent 7,644,122 is infringed by Facebook, and as business customers of Facebook receiving messages, that there