Scott McKeown

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Practical Pendency of IPR to be 18-24 Months

In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.

IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.

Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX.

To address this problem, Congress mandated that IPR be concluded at the USPTO with in 12 months, extendable to 18 months if the Director is able to show cause for extension (§ 316 (11)). Yet, is it realistic to expect a 12 month duration?
Continue Reading How Long Will Inter Partes Review Really Take?

USPTO Denies Petition for Further Review

The epic battle between Microsoft and i4i effectively ended with the Supreme Court ruling upholding the clear and convincing standard. Yet, some lingering arguments at the USPTO were only recently finalized relative to i4i’s U.S. Patent 5,787,449.

As a reminder, Microsoft had made two attempts to invalidate the ‘449 Patent at the USPTO. A first ex parte patent reexamination was favorably concluded to i4i without amendment to the original claims (90/010,347), and the second request was denied outright (90/011,198) on November 24, 2010.

On December 27, 2010 a Rule 1.181 petition was filed to seek supervisory review of the examiner’s November denial. This petition was denied…

Continue Reading Microsoft’s Failure in Second Reexamination Attempt of I4I Patent Final

Shift in BPAI Fact Finding Necessitates New Rejection

Back in February, In re Stepan (or In re Side-steppin if it helps you remember the case) was argued before the CAFC. In a previous post, I explained how this case demonstrated a problem addressed by the 2010 proposed rule package for practice before the BPAI. Namely, the shifting in rejection grounds during appeal relative to that of the originally applied rejection. The newly proposed Rules attempt to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course once prosecution is closed as no new rebuttal evidence may be entered.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer or BPAI decision can be quite prejudicial during patent reexamination. This is because,…

Continue Reading Shift in Grounds of USPTO Reexamination Rejection Examined by CAFC

High Court Denies Inventors Plea to Punish Law Firm

Perhaps surprising no one but the petitioner, the strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton came to an end Monday on the steps of the nation’s highest court.

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin)…

Estoppel Effect of USPTO Decision Attaches Only After All Appeals Exhausted

Estoppel, as it relates to inter partes patent reexamination (IPX) proceedings and the new inter partes review (IPR) of the AIA, has been a topic of discussion here over the past few weeks. As if on cue, the CAFC has chimed in with a bit of clarification on the topic of (IPX) estoppel as it relates to 35 USC § 315.

The USPTO has maintained the position that IPX estoppel (35 USC § 317) only attaches after all appeals are exhausted. That is to say, the USPTO will not honor an intermediate court result to for the purposes of vacating an ongoing IPX, or denying a new request, by operation of estoppel. Instead, the USPTO awaits a final appeal decision (or time for filing of such to pass). The Office has not had much opportunity to comment on the complimentary statute § 315 (c), which provides the estoppel effect of a USPTO decision on the district courts.  This analysis was performed this past week by the CAFC.…

Continue Reading CAFC Sides with USPTO Interpretation on Reexamination Estoppel Timing

Inter Partes Review Estoppel Applies to Ex Parte Patent Reexamination

Last week, I explained the current estoppel provisions of inter partes patent reexamination and the new Inter Partes Review estoppel relative to parallel litigation proceedings. I pointed out that the Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in important aspects of timing and scope.  As a result of these improvements, it is expected that the filing of an IPR will be especially effective to stay a district court litigation pending the outcome of the IPR. (Note: The ITC may take a dimmer view of these speedier proceedings in view of their mandate).

Another interesting consideration is how the new estoppel provisions will impact the USPTO. That is to say, the estoppel provisions of Inter Partes Review will not only have an impact on court proceedings, but also other USPTO proceedings, including ex parte patent reexamination.
Continue Reading Inter Partes Review Estoppel to Unmask Anonymous Filers?

Estoppel Provisions Disfavor Parallel Proceedings

During yesterday’s webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that of Inter Partes Review. The Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in significant respects.

In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, while IPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.

Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR.…

Continue Reading New Inter Partes Review Grounds to Stay Most Patent Litigation?

Reexamination Disclaimer Effectively Amends Claims Surrendering $29 Million Damage Award

During a post grant proceeding, an amendment of an originally issued claim could create an intervening rights defense for 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). Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.

Yesterday, the CAFC considered whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, changed in scope by operation of Patentee disclaimer. This “amended in effect” theory has shown up in at least one other case as of late and is likely to gain considerable traction going forward thanks to yesterday’s CAFC decision.
Continue Reading CAFC Finds Intervening Rights Created by Post Grant Disclaimer