Scott McKeown

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Interference Model to Control Petition Explosion & Manage Filings

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.

To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305)  was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.

My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that…

Continue Reading Streamlining Petition Practice Management in Inter Partes Patent Reexamination

2011 Patent Reexamination Appeal Results (Q1-Q3)

As discussed last week, every quarter, the BPAI releases general statsistics on patent reexamination appeals.  As promised, I have now gathered statistics that are specific to the type of reexamination proceeding. (Special thanks to the USPTO for providing me these figures).

Below are statistics from October 1, 2010 through May 20, 2011.  Note that Q3 of FY 2011 has not yet closed, so, these statistics to not quite cover all of Q1-Q3.  First let’s look at the overall statistics for 2011.…

Continue Reading Recent Patent Reexamination Appeal Results (FY 2011)

Important Decision Attempts to Address Plague of Inequitable Conduct Accusations in Patent Litigation

Today the CAFC decided Therasense Inc. v. Becton Dickinson and Co. In this landmark decision, the CAFC reconsidered the doctrine of inequitable conduct, deciding that:

While honesty at the PTO is essential, low standards for intent and materiality have inadvertently led to many unintended consequences, among them, increased adjudication cost and complexity, reduced likelihood of settlement, burdened courts, strained PTO resources, increased PTO backlog, and impaired patent quality. This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public. (Decision at 24) (full decision here)

As previously discussed, this decision will have an important impact on patent reexamination practice, as well as application prosecution in relation to the duty of disclosure, good faith, and candor. With the tightening of the materiality standard, (described below) monstrous IDS filings may now be a remnant of the past.

Interestingly, the CAFC has now adopted a “but for” standard of materiality, such as employed in a Walker Process claim (antitrust).…

Continue Reading What Does the Therasense Decision Mean for Patent Reexamination?

Rare Victory in Patent Reexamination

Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. A common form of declaration evidence introduced in patent reexamination, although only rarely successful, attempts to identify objective evidence of non-obviousness. MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As discussed in past posts, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively identify a nexus between this evidence and the patented claims. Occasionally, however, evidence of secondary indicia of non-obviousness can be the difference between winning and losing.
Continue Reading Secondary Considerations Rebut Obviousness Finding

BPAI Considers Whether a Purchased Publication is Publicly Available

In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March,the degree of public accessibility of such references is key to determining whether or not a given reference qualifies as prior art. In the March decision, public accessibility was not found for a reference limited to confidential distribution among members of a technical group.

Yesterday in Ex ParteePlus Inc, the BPAI considered an appellant’s theory that a proprietary user manual was not publicly accessible since it required a purchase, and included boiler plate language identifying its proprietary nature.…

Continue Reading Proprietary Publications as Prior Art

How do Appellants Fare on Appeal in Patent Reexamination?Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. (click to enlarge)  The category “other” refers to administrative remands, substantive remands and dismissals.Over the past three years, examiners have been affirmed, at least in some fashion, close to 70% of the time. Unfortunately, this appeal data does not distinguish between ex parte and inter partes results. One would expect the inter partes appeal results to be more favorable to third party requesters based upon USPTO statistics on the ultimate outcome of these proceedings. Still, an affirmance in inter partes patent reexamination could also indicate a favorable outcome for a patentee if the affirmance relates to an examiner decision to allow claims. Hopefully the PTO will begin to distinguish between the type of reexamination proceedings in future appeal statistics. In the meantime, I will present a more detailed analysis of the general results above in the near futu

Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).

An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011.…

Continue Reading Appeal Results in Patent Reexamination