Scott McKeown

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Reexamination Certificate Printing Process Streamlined

A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate. The certificate functions to communicate the results of the proceeding to the public (claim changes/cancellations, etc.)

Historically, upon issuance of the NIRC the USPTO would hand the file off to a government printing contractor located in Pennsylvania for printing of the reexamination certificate. Once in the hands of the printing contractor, the file would be reviewed to ensure completeness (and was often times shuffled back to the agency for administrative oversights, largely related to IDS filings). Thus, from the time a NIRC is issued, it is not uncommon for a certificate print cycle to span 4-6 months in duration. This delay was more than just a minor inconvenience for Patentees as amended/new claims do not legally exist until printed. In other words, potential infringement damages for such amended/new claims are lost to bureaucratic inefficiency even though the substantive aspect of the reexamination proceeding is effectively finished.

The good news is that the USPTO has now addressed the printing delay and has drastically reduced the duration of the print cycle in recent weeks.
Continue Reading USPTO Shaves Months Off Patent Reexamination Pendency

MPF Claim Interpretation Required to Initiate New AIA Proceedings

In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means/step-plus-function” claims.

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone. In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims. Of course, such a mapping is expressly required when appealing a rejection to the Board of Patent Appeals & Interferences (BPAI).

As a result, Patentees will often argue for proper claim interpretation under 112 6th paragraph throughout the reexamination, only convincing the Board as to the proper interpretation of the MPF claims years later. Likewise, by not forcing the issue at the time of the Request, Patentees may only resort to arguing 112 6th at the appeal stage (after failing to distinguish art under the BRI standard); either situation is a waste of Office resources. One such case of a Patentee changing course was illustrated yesterday in Ex Parte EON Corp. IP Holdings LLC.
Continue Reading Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

Modern Patent Troll Business Model Insulated from New Post Grant Challenges

Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing fees for both Post Grant Review (PGR) and Inter Partes Review (IPR), $35,800 and $27,200 respectively. These filing fees attempt to capture the aggregate cost of conducting these proceedings as estimated by the Agency. Although the filing fee price levels were largely expected by the public, especially after the proposed increase in the filing fee for ex parte patent reexamination, the accompanying claim-count surcharge was not.
Continue Reading Post Grant Fee Structure a Boon for Patent Trolls?

USPTO to Host First of Sevral Road Shows at Alexandria Campus

Today the USPTO will conduct a webinar explaining the rule packages recently issued to implement the vairous provisions of the America Invents Act. Information necessary to access the webinar is found (here), along with the agenda. Topics include, Supplemental Examination, Post…

Court Cites ACP as Supportive of Summary Judgment of Invalidity

Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the accused infringers often attempt to use the grant of reexamination to substantiate their invalidity contentions. The argument is that an alleged infringer’s invalidity contentions are entitled to more weight where the Patent Office has found at least some substantial new question of patentability based on those same arguments, or can demonstrate repeated rejections of the claims by the USPTO.

This tactic, while often deemed too prejudicial for consideration by a jury is often times an acceptable practice for summary judgment purposes. The advantages of this practice were demonstrated last week in General Electric v. Mitsubishi Heavy Industries (NDTX).
Continue Reading Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

In re Tanaka Decision Likely to Drive Two-Part Supplemental Examination Filing Strategy

During yesterday’s Strafford Legal webinar on the topic, I explained that Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. This mechanism, effective September 16, 2012 will be available to all issued patents.

In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may serve to render the patent invalid under an inequitable conduct theory in litigation. Upon submission of Substantial New Questions of patentability (SNQs) detailing such potential defects, the Office will reconsider or correct such information; that is to say the Office will perform a “supplemental examination.”

If the SNQs of an SE request do not rise to the appropriate level to justify further proceedings, an SE certificate is issued stating such, and the proceeding concludes. Likewise, should SNQs be identified in the request for SE, a certificate is issued identifying such. Thereafter, a modified form of “re-examination” is initiated by the Office to explore the SNQs presented in the request. Should the Office determine that the identified SNQs do not preclude patentability in the reexamination phase, a reexamination certificate is issued to complement the SE certificate. Thus, SE is modeled on the same “but for” materiality standard pronounced in Therasense.

At first blush, the option to cure potential inequitable conduct issues seems an attractive option for Patentees. Yet, practically speaking, there may be very few instances in which an SE filing is advisable.…
Continue Reading Is Supplemental Examination a Risk Worth Taking?

CAFC Re-considers Disclaimer Based Intervening Rights Defense

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 USC § 252). Whether or not a claim change in post grant patent proceeding results in the an intervening rights defense is far from a straightforward determination as evidenced by the recent decision Marine Polymer Technologies, Inc. v. Hemcon, Inc..

The earlier panel ruled that disclaimer of claim scope is equally effective in creating an intervening rights defense as an explicit amendment. As such, the decision may be distorted to suggest that even if the patent owner is merely urging a claim interpretation that is consistent with the manner in which the term would have been understood at the time the underlying patent application was filed, intervening rights are created  For example, in cases where the post grant record simply clarifies the way in which a skilled artisan would have understood a claim term at the time of filing, or reiterates the positions of the previous intrinsic record, the scope of the claims cannot properly be said to have been altered during the subsequent proceeding.

Will the en banc ruling provide for such needed flexibility?
Continue Reading Practicalities of Patent Reexamination Key to Proper Intervening Rights Determination

USPTO Fee Setting Proposal Urges Huge Increases in Fees

Along with the post grant rule packages released Tuesday, the USPTO published proposed rules for adjusting all of its fees under its new fee setting authority set forth in the America Invents Act (AIA).

As explained last week, the new USPTO fee setting authority will permit the USPTO to revise the fees set by Congress under 35 U.S.C. §§ 41 (a) and (b) based on the aggregate costs of funding the USPTO. This essentially will permit the USPTO to incentivize and disencentivize applicant, patent owner and third party behavior by setting the fees at low or high levels to encourage certain activities while discouraging others.

When reviewing the newly proposed fees for RCEs, a practice the USPTO tried to all but outlaw a few years back, it can be argued that the Office is purposefully pursuing a cost prohibitive control. The current RCE fee (large entity) is $930. The Office now proposes to raise this fee, near doubling it, to $1700. …

Continue Reading USPTO Proposes Dramatic Raises to RCE Filing Fee

PTAB & Post Grant Proceedings Detailed by USPTO

In advance of the printing in the Federal Register later this week, the USPTO has released its proposed rules for the contested case provisions, i.e., inter partes review, post grant review, the transitional program for covered business methods, and derivation. The documents appearing below are not the official Federal Register publications of those proposed rules. The official Federal Register publications will follow later this week on February 9 and 10, 2012. Publication of the proposed rules in the Federal Register will begin the sixty-day public comment period for the proposed rules.

Links to the various rule sets are found below:

Proposed Rules for Trials before the Patent Trial and Appeal Board (aka Proposed Umbrella Rules)

Practice Guide for Proposed Trial Rules

Proposed Rules for Post Grant Review

Proposed Rules for Inter Partes Review

Proposed Rules for the Transitional Program for Covered Business Methods

Proposed Rules for the Definition of Technological Invention

Proposed Rules for Derivation

Quick facts are as follows;…
Continue Reading USPTO Issues Massive Post Grant Rule Package