Scott McKeown

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USPTO Post Grant Consideration Precludes “But For” Materiality

The en banc CAFC decision in Therasense has recalibrated inequitable conduct jurisprudence. The decision effectively tightened the standard that is applied in judging materiality of information underlying an inequitable conduct defense. More specifically, the Court replaced the previous “reasonable examiner” standard with a new “but for” materiality analysis. The “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.

As I discussed prior to the issuance of the Therasense decision, a “but for” materiality standard applies in Walker Process antitrust claims. Earlier this year, in U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), the California District Court considered whether or not prior art materials could satisfy a “but for” materiality standard where the USPTO had considered the very same information in a patent reissue proceeding, and had still reissued the patent. In deciding that this information could not be material as a matter of law, the Court explained that while a USPTO proceeding cannot cure fraudulent conduct, it can be dispositive of a “but for” materiality standard and that “[b]ecause the PTO reexamines re-issuance applications as if being presented for the first time, the fact that the PTO did re-issue Defendant’s patent even with the prior art precludes Plaintiff from plausibly pleading [Walker Process].[1]

Since the court’s initial ruling on the Walker process claim, the Therasense decision issued.  Last week, the Court considered the applicability of the same art under an inequitable conduct theory.
Continue Reading Therasense Drives Summary Judgment Victory for Reissue Patentee

Patent Reform Provisions to Impact Technology Companies?

The race to the USPTO door may start very shortly for those defendants charged with infringement of a “business method patent.” 

Patent reform legislation is ostensibly poised for a September 2011 enactment.  The current version of the legislation (H.R. 1249) includes a provision entitled “Transitional Program for Covered Business Method Patents.” The provision essentially provides post grant review (as defined in the legislation) for patents that were issued prior to enactment. This provision is of a limited time, 8 years, and can only be used if actually sued or charged with infringement of a covered business method patent.

The clear intent of the author of this provision (Sen. Charles Schumer, D-N.Y) was to provide relief to the New York Banking Industry from the likes of Data Treasury. Some have gone as far as to label this provision a “bank bailout.” (note the provision in the bill excluding ATM machines as a venue tool Sec. 18(c))

The legislation defines a business method patent in fairly pliable terms, defining…

Continue Reading Proper Business Method Patent Challenges Under the America Invents Act?

injunction-reexaminationFinal Patent Reexamination Result to Dissolve Injunction 

A defendant’s request to delay entry of a permanent injunction until reexamination concludes is more likely to be well-taken by a district court when the reexamination is near conclusion and rejecting the patent owner’s claims.  Depending on the length of time that passes before a litigant requests reexamination of a patent, either party could argue that the timing of the request supports its own interests under the four factor P.I. test and the balancing of the equities.

This tension played out recently in Inventio AG v. Otis Elevator Co. (SDNY)

In Otis, the Court found that entry of a permanent injunction was against public interest (i.e., P.I .fourth factor) where a patent reexamination existed
Continue Reading Permanent Injunction Status Linked to Patent Reexamination

NTP Decision Explains Propriety of 112 Analysis in Patent Reexamination

MPEP §§ 2258 and 2658 explain that, during a reexamination proceeding, the USPTO will not analyze originally issued claim language with respect to 35 U.S.C. § 112, 1st paragraph. (It will, however, consider such issues where new claim language is introduced by amendment).

On the other hand, 35 U.S.C. § 112, 1st paragraph is considered where the patent subject to reexamination has claimed the benefit of the filing date of an earlier filed U.S. or foreign patent application.  MPEP § 2258 (I)(C). That is to say, if the parent patent does not support the claims of the child patent claims under reexamination, a substantial new question of patentability (SNQ) may be presented that is based on intervening patents or printed publications as the child patent claims under reexamination would not be entitled to the filing date of the parent. In such a case, the practical effect is that the original patent claims are analyzed under 35 U.S.C. § 112 relative to the priority application.

The challenge to the priority determination is in practice a  “back door” attack on the original patent claims’ compliance with 35 U.S.C. § 112, 1st paragraph, especially where the patent subject to reexamination is a “straight continuation” having an identical disclosure to its parent.

In last week’s NTP decisions, this strategy was blessed by the CAFC.
Continue Reading Attacking 112 Support in Patent Reexamination

CAFC Revisits “Loser Estoppel” in Patent Reexamination

While reexamination is often initiated parallel to litigation, some have relied upon reexamination in post-trial settings to get out from under injunctions and/or jury verdicts.

One of the more well known cases in this regard is In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding. See Also In re Translogic Tech. Inc. (CAFC 2007)

Yesterday, the CAFC heard oral argument in the case of In re Construction Equipment. Construction appealed from a decision of the BPAI in ex parte patent reexamination that found the claims of the patent anticipated and/or obvious. Previously, the CAFC found the Construction patent not invalid on appeal from the District Court. Thereafter, the appellant pursued ex parte reexamination on some of the very same art previously considered.

During oral argument the court, sua sponte, questioned the propriety of the USPTO’s seeming dismissal of the Court’s previous validity ruling.…

Continue Reading CAFC Validity Determination Undone By Appellant via Patent Reexamination?

BPAI Definition of Email Found Unreasonable by CAFC

Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue. Today, the CAFC, while affirming much of the UPSTO’s fact finding, did indeed remand the case for further consideration of a new definition of “electronic mail” or “electronic mail message.”

The eight related appeals included thousands of claims of the NTP portfolio, of note, the USPTO rejected all but one of the previously adjudicated (RIM Litiigation) NTP claims in patent reexamination. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected and affirmed (BPAI). Rejections were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims were added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

Today, the CAFC affirmed the rejection of all 764 claims of the ‘592 patent. (NTP I, here).

A second decision (NTP II, here), which pertains to the remaining patents noted above as well as a few others, Vacated-in-part, Reversed-in-part, and Remanded previous determinations of the BPAI.

What does all of this mean for NTP?…

Continue Reading CAFC Sends NTP Patent Reexaminations Back to USPTO

Callaway Pro V1 Golf Dispute Taken to Virginia District Court

This past January, I recounted the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway has asserted that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873) in the Delaware District Court.

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. In March of this year the BPAI decided the appeals of these reexaminations, finding the asserted claims of the Callaway patents invalid. Likewise, the same claims were found invalid in March of 2010 by the Court (neither dispute has made it to the CAFC).

Interestingly, patent reexamination was sought by Acushnet despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court. In fact, the Court has found Acushnet to have breached the terms of the settlement agreement by virtue of the patent reexamination filings (decision here).

At the outset of the reexamination proceedings Callaway attempted to have the reexamination proceedings vacated…

Continue Reading Can a Forum Selection Clause Prevent Patent Reexamination?

Is the USPTO Obligated to Follow a District Court Order?

Last Friday, the patent infringement action MONKEYMedia Inc. v. Apple Computer, et al (WDTX) was stayed pending the outcome of several patent reexaminations (U.S. Patents 6,393,158; 7,467,218; and 7,890,648). Interestingly, the stay is of a limited duration, 3 months, to allow time for the reexaminations to progress. In order to ensure that the reexaminations advance, the Court ordered the parties to expedite their submissions to the USPTO. What sets this decision apart from other is that the Court also ordered the USPTO to “expedite” the reexamination proceedings. (Order here)

Aside from the legal debate about whether or not the Judge has jurisdiction over the PTO, and whether or not the USPTO will follow the Order….lost on many is the fact that the USPTO would already do what the judge is asking, Order or not.…

Continue Reading Court Orders “Extra Special” Dispatch in Patent Reexamination