Scott McKeown

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When Inter Partes Patent Reexamination Becomes One Sided

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. Most recently, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination.

Earlier this month, I explained the presentation I gave at the USPTO public meeting of  June 1st for accelerating petition processing. As most practitioners realize there is a petition crisis at the USPTO that is a direct result of the increased use of inter partes patent reexamination. In my previous proposal on this topic I explained that certain, procedural disputes are commonly petitioned in inter partes patent reexamination. For example, petitions relating to  page limits, petitions to strike filings, etc. The Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals.

In addition to processing such seemingly routine petitions in a different manner, the Office should also consider eliminating situations that generate such petitions as a matter of course.
Continue Reading Streamlining Petition Practice in Inter Partes Reexamination

Oath Addressing Only New Claims Acceptable

Last week the BPAI considered an application for patent reissue (U.S. Patent 5,819,034) Ex Parte Kuiacose Joseph et al. The appeal considered the propriety of an oath in a patent reissue that did not identify a mistake in the original claims. A similar question was recently explored at the CAFC (In re Tanaka) relative to new, dependent claims.

In the application for patent reissue the original claims were cancelled in favor of new claims directed to a different invention. The cancelled, original claims were presented in a divisional patent application (now suspended pending the reissue). The Examiner found the reissue oath, which was directed to new method claims, defective since it did not identify an error in the original claims. The originally issued claims were directed to a system.

In other words, consistent with the USPTO’s Tanaka argument, the Examiner took the position that the oath was defective as not identifying any defect in the issued patent. The BPAI disagreed with the examiner.…

Continue Reading BPAI Considers Patent Reissue Oath Directed Only to New Claims

Significant Amendments Targeted for H.R. 1249

Hold up, wait a minute.

The America Invents Act has been seemingly remixed and re-released as the “Leahy-Smith America Invents Act.” All Republicans, throw your hands up, all Democrats, throw your hands up…

With the House now moving to floor debate of H.R. 1249, amendment proposals have come flying from all directions. Not surprisingly, some of the proposals aim to strike PTO fee setting authority, the end of fee diversion, as well as the first to file provision. Should these amendments be adopted, the bill would be killed. Another amendment, introduced by John Conyers (D-MI) seeks to strike everything but PTO funding (including the Detroit Office!). 

Further amendments attempt to address emerging criticisms of the bill. For example, a severability provision is added should any provision fall on constitutionality challenges. As a reminder first inventor to to file is deemed unconstitutional by some, and the retroactive effect of the Transitional Business Method Review has been challenged as in violations of the Takings Clause.

So, what changes are proposed for reexamination and post grant?…

Continue Reading Patent Reform–The Remix

Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination?

On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. 2008-1511.  The majority opinion authored by Chief Judge Randall Rader established a single new standard for determining materiality in inequitable conduct cases. This new “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.

Unlike the prior standard used in determining materiality of undisclosed information, the new standard assesses materiality on a preponderance of evidence burden of proof standard giving the patent claims their broadest reasonable construction in light of and consistent with the supporting patent specification. Presumably, because the majority opinion rejected the applicability of the USPTO’s materiality standard under 37 CFR § 1.56(b)(1), the new “but for” standard will take into account any rebuttable evidence that is proffered by the patent owner such as antedating non-statutory bar prior art and objective indicia of non-obviousness, irrespective of the fact that none of such rebuttal evidence was ever submitted to the USPTO for consideration prior to patent issuance.

A consequence of the new “but for” test for materiality is that, at least for those filings that include art forming the basis of an inequitable conduct defense to infringement, inter partes patent reexamination is now the more attractive option. …
Continue Reading Therasense Decision & Inter Partes Patent Reexamination

USPTO Proposal Forces Patentee Cooperation in Violation of Statute?

Last Monday, I proposed managing petition practice in inter partes patent reexamination based on the patent interference model already in place. As a reminder, this proposal is responsive to the proposed collection of working concepts and initiatives published in the Federal Register for the purpose of streamlining patent reexamination. (a copy of the Federal Register Notice is found here) I discussed this proposal at the USPTO, along with other speakers on June 1, 2011. (webcast and other materials here)

As I mentioned in last week’s post, the USPTO proposal to modify and make permanent the Pilot Program for Waiving the Patent Owner Statement was not discussed in detail during the meeting. However, this proposal, at least from feedback I have received, is one of the more controversial.

In a nutshell, the USPTO is proposing to modify the existing Pilot Program by: (1) Making the Pilot Program permanent; and (2) Issuing a first “provisional” first action together with the Order of reexamination for those Patentees that do not agree to waiver. With respect to the “provisional” first action, unless a Patentee files a Statement overcoming the rejections in the Provisional Action, the next action would issued as a Final Rejection; therein lies the controversy.…

Continue Reading Encouraging Waiver of a Patent Owner Statement in Ex Parte Patent Reexamination

Presumption of Validity Affirmed by Supreme Court

Today, the Supreme Court issued a unanimous decision in the closely watched case of Microsoft v. i4i . As discussed at length previously, Microsoft sought Supreme Court review of the following issue:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.

Today the Supreme Court affirmed the CAFC’s earlier decision upholding the clear and convincing standard, much to the relief of stakeholders everywhere. (save Microsoft of course)

The holding (here) explained that although 35 U.S.C. § 282 does not provide for a specific standard of proof, the statute’s use of the terminology “presumed valid” connotes such a meaning based on…

Continue Reading i4i Defeats Microsoft Challenge to Clear & Convincing Standard

Political Maneuvering & Patent Reform

Next week the House is expected to begin floor debate on the America Invents Act…maybe. Further amendments are expected to be offered prior to the floor debate, however, two recent sticking points have emerged that may stall recent progress.

The first, although not new, appears to have gathered some steam lately, namely, the debate over the proposed “first inventor to file” provision. Having been unsuccessful in defeating this provision previously, opponents now insist that the U.S. Constitution requires that the “first true inventor” be protected. The reasoning goes that the language “first and true inventor” appeared in the Patent Acts of the late 1700s (which were written by the some of the same guys) so the Constitution must be interpreted similarly. The IEEE has gone as far as to suggest that the recent Supreme Court decision in Stanford v. Roche somehow impacts Patent Reform…it doesn’t.  Yet, desperate times call for desperate measures.

The second sticking point has emerged in the last few days and has the greatest potential to derail efforts until after the July 4th break, that is, renewed efforts to continue fee diversion from the USPTO.…

Continue Reading Patent Reform–Coming Distractions

BPAI Agrees Invalidated Claims are Invalid

In a strange development, the BPAI issued a decision yesterday invalidating claims 1-6 of U.S. Patent 6, 961,737. While the decision itself is straight forward, it is odd in that claims 1, 3, 4 and 6 were previously invalidated by the CAFC.

As discussed this time last year, the ‘737 Patent was one of the patents at issue in In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010). On May 28, 2010, the CAFC determined that all but claims 2 and 5 of the ‘737 Patent were invalid based upon prior art, including a patent identified as the “Bobo Patent.” The decision was noteworthy as footnote 3 explained the final rejection status of the reexamination, lamenting that the appeal may have been mooted altogether had the reexamination been at a more advanced point. At that time I pointed out that had the defendants not delayed their request for some two years that they may have been able to save themselves the cost of the CAFC appeal.

Yesterday, the BPAI essentially agreed with the CAFC, invalidating all claims based on the Bobo Patent, but such was a waste of time and resources. (decision here)

As noted in MPEP 2286, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination.

So why did the BPAI waste the time in issuing this appeal decision?…

Continue Reading Ablaise Patent Invalidated…Again

Meeting Materials & Webcast Replay Provided

As mentioned previously, the USPTO has today posted the presentations and papers from the speakers of last week’s meeting. The materials can be found (here) along with a replay of the webcast (to be up later in the week). Earlier this week, I provided an overview of

Public Notice Function of Interview Summary Attacked by Nokia

In ex parte patent reexamination, the Patentee may “interview” the examiners in charge of the reexamination in an effort to advance the prosecution of the case.  In most cases, the interview is scheduled to last one hour, during which time the Patent Holder may present amendments, explain their invention, attempt to distinguish their claims over the art of record, etc.  At the close of the interview both the examiners and Patentee prepare and file a summary of the discussion for the public record. As discussed previously, the failure to provide an interview summary can have serious consequences for Patentees.

Of course, an interview summary is not a transcript as is the norm for oral hearings in litigation settings. Instead, it is a high level overview of the discussion between the Patentee and the examiners. Yet, as long as the summary is accurate and competently prepared by both sides, the public is well served by this practice.

Still, as many patent reexaminations are now conducted in parallel to litigation, not surprisingly, the lack of an interview transcript is often played up in court by third parties. It is not uncommon for patent reexamination counsel to be subpoenaed and questioned on the interview discussion, motions filed to require the interview be recorded, or even a rare subpoena issued to a USPTO examiner. 

Most recently, in Apple’s battle with Nokia, the adequacy of the USPTO interview record was called into question. …

Continue Reading Patent Reexamination Interview Practices Attacked