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Inter Partes Patent Reexamination Petition Practice May Back Fire on Unwary PatenteesIn inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis. One of the more common petitions in inter partes patent reexamination is a petition for waiver of the page limit requirement. That is to say, submissions in inter partes patent reexamination are limited to 50 pages of substantive comment. (37 C.F.R. § 1.943). As it is not uncommon for initial requests for inter partes patent reexamination to total hundreds of pages, Patentees will often seek waiver of the page limit in order to respond to all issues. The waiver of Rule 943 is sought via petition (37 C.F.R. § 1.183).Of course, at the time of petitioning, the patentee is by definition submitting a response that exceeds the 50 page limit. In other words, the “response” as submitted does not comport with the statutory definition unless, and until, the petition is granted. As recently demonstrated in 95/001,206 (decision here) such a filing will effectively delay the time for a third party response by several months.In the ‘206 case, a patentee response was filed on June 7, 2010 along with a petition to waive the page limit requirement. The third party did not file a response by July 7, 2010. The patentee petition was granted on August 11, 2010. In the petition, the USPTO noted that a third party response was due 30 days from the date of the petition decision; thereafter the third party filed their response (some 2 months after July 7, 2010). Subsequently, the patentee filed a further petition seeking to strike the third party response as untimely, in the decision linked above, the USPTO explained:Certainly, it is not possible to adhere to the page limit requirement in all cases. However, patentees should consider the impact of filing a response that exceeds the page limit together with an appropriate petition. That is to say, the cost of additional pages is effectively an extension of time that would be otherwise unattainable to the third par

In inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.

On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.

As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis.

Continue Reading Why Patent Owners Should Consider Operating Within Page Limits

Early Stage Reexamination Result Lacks Probative Value for Summary Judgment PurposesAs discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.As explained last week in Volterra Semiconductor

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Flawed Patent Reexamination Request A Matter of National Importance?The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California court determined that the state law cause of action was preempted by federal law (i.e., the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted seem slim to say the least. The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.As I have commented in previous posts, in addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. Further, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood added 22 new claims, this certainly was not harmful.Strange that this dispute has been pursued this f

The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. 

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California court determined that the state law cause of action was preempted by federal law (i.e., the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)

Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:

Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.

Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted…
Continue Reading Dispute Over Proper Use of Patent Reexamination Pursued to Supreme Court

Recently Filed Reexaminations Sway California Court to Halt ProceedingTiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  The Washington case is now stayed pending the ITC action, which is set for trial this November.Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.Typically, staying a district court action pending patent reexamination is disfavored when direct competitiors are involved. Rather than considering  the potential loss of market share, customers, and the like, the court emphasized the aggressive, and concurrent actions taken by Microsoft in other fora. The court explained: (full decision here). . .Microsoft claims that it will suffer undue prejudice as a result of a stay because staying this case alone will not increase the likelihood of settlement. Opp‟n 11-12. According to Microsoft, because the ITC Investigation and TiVo‟s suit against AT&T will still continue, Microsoft will have no reason to resolve this case. Id. at 11-12. The Court is not persuaded. If the Court were to stay this case, Microsoft is still asserting against TiVo, in the ITC and in the Western District of Washington, patents related to those at issue here. Those actions also involve the same accused TiVo products as those accused in this case. Moreover, the ITC Investigation is set for trial in November 2011, much sooner than trial in this matter would be possible. Therefore, even if this case is stayed, the parties will go to trial against each other twice within the next seven months, as the Eastern District of Texas case is set for trial in October of 2011, and each trial carries with it the potential for injunctive relief. Thus, it is still possible that Microsoft and TiVo will resolve their broader dispute without this litigation. This, in turn, could lead to settlement here.Prejudice is a hard sell when you have the legal resources and market power of Microsoft.This case was brought to my attention by the great Docket Navigator.

TiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.

TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. 

Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  

The Washington case is now stayed pending the ITC action, which is set for trial this November.

Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.…

Continue Reading Tivo Shuts Down Microsoft Case

Overhaul to U.S Patent System Awaits Further DebateThere has been true progress toward enacting patent reform in 2011. First, in March, S.23 was shepherded through the Senate in a matter of weeks by Senator Leahy. Next the House took up H.R. 1249. The House companion bill includes much of the same, if not identical provisions

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SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent ReexaminationAs discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.   

As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) 

In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.

Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.…

Continue Reading SNQ Review Options in Patent Reexamination

USPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule AnalysisBack in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”The CAFC decision (here) explained that the materially narrowing necessary to avoid recapture must relate to the surrendered subject matter, not an “overlooked aspect” of the invention as required by the USPTO, stating:[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured..           .           .           .           .           .           . [T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. (emphasis added)Mostafazadeh did not eliminate the attachment pad limitation, only modified it by removing “circular.” Still, the Board found that the narrowing limitations added in the patent reissue did not relate to the attachment pad limitation, thus step (3) of the Clement test could not save the Patentee. Had the Patentee added narrowing language that related to the circular pads, such as requiring that the attachment pads be formed of a specific alloy, or oriented in a certain way, the removal of “circular” may have been acceptable.This case, much like In re Tanaka, will provide Patentees a greater degree of flexibility, and opportunity to pursue patent reissue going forward.

Back in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”

On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.

In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”

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Continue Reading CAFC Adjusts the USPTO’s Recapture Rule Analysis

Retroactive Correction of Patent ClaimsBack in March, I discussed the degree of change that can be secured from the USPTO via a Certificate of Correction (COC). As a reminder, one of the more limited methods to address errors in an issued patent is via COC as defined by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination.Once issued, a valid COC is only effective prospectively. For this reason, such certificates are best secured at the earliest possible date.Of course until claims are very closely scrutinized, the need for minor correction may not be so apparent. In cases where the COC is not secured for years, is there a mechanism available to retroactively correct a patent claim as to such minor errors?This issue was recently explored in Fujitsu Limited v. Tellabs Operations Inc., and Telllabs Inc. (NDIL).In Fujitsu U.S. Patent 5,386,418 was at issue. Claim 1 recited the language “and flag data;” this was a mistake. Claim 1 should have recited “a flag data.”Although the ‘418 Patent originally issued in 1995, a COC was not obtained until 2007, immediately prior to the Tellabs litigation.With respect to the claim language issue, Tellabs advanced two theories on summary judgment: (1) The COC was invalid for broadening the claims; and (2) claim 1, as issued, was indefinite.In ruling on these motions, the court explained that the COC corrected a minor issue, thus the COC was valid. For similar reasoning the court rejected argument (2).Fujitsu also sought summary judgment of its own, arguing that that the claim correction should be made retroactively, based on the doctrine of judicial correction. Tellalbs argued that the combination of a COC and judicial correction for the same patent was improper. The court agreed with Fujitsu, explaining, (full decision here):Although a valid certificate of correction is only effective prospectively, Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000) (“[F]or causes arising before its issuance, the certificate of correction is not effective.”), the district court can retroactively correct certain errors in a patent’s claims if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354, 1357 (Fed. Cir. 2003). These “determinations must be made from the point of view of one skilled in the art.” Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339, 1353 (Fed. Cir. 2009).  .           .           .           .           .           .           .           .           .           . Neither Hoffer nor Ultimax suggests that the district court’s authority to correct a patent is constrained by the presence of a certificate of correction, and the court declines to impose such a proscription against judicial correction in this case. Consequently, the court agrees with Fujitsu that the Novo standard is the controlling standard for judicial correction, and the ‘418 Patent’s Certificate of Correction does not prevent this court from correcting the same error in claim 1.           .           .           .           .           .           .           .           .           . Patents provide an important notice function to the public and, as a result, post-issuance judicial corrections which have a retroactive effect must be carefully scrutinized. In this case, viewing the intrinsic evidence from the perspective of one of ordinary skill in the art, as the court must in determining whether a judicial correction is supported under Novo, this court finds that the only reasonable correction of claim 1 replaces “and flag bit data” with “a flag bit data.” A person of ordinary skill in the art, having reviewed the specification, drawings, and prosecution history, would have immediately recognized this error and understood what was claimed. The court accordingly corrects claim 1 of the ‘418 Patent to replace “and flag bit data” with “a flag bit data.”This case was brought to my attention by the great Docket Navigator.

Back in March, I discussed the degree of change that can be secured from the USPTO via a Certificate of Correction (COC). As a reminder, one of the more limited methods to address errors in an issued patent is via COC as defined by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination.

Once issued, a valid COC is only effective prospectively. For this reason, such certificates are best secured at the earliest possible date.

Of course until claims are very closely scrutinized, the need for minor correction may not be so apparent. In cases where the COC is not secured for years, is there a mechanism available to retroactively correct a patent claim as to such minor errors?…

Continue Reading Judicial Correction of Patent Claims

Stay of California Litigation Extended to Await USPTO ClarificationTypically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to move forward with the litigation. For example, where claims are confirmed/allowed, a judge is likely to consider lifting the stay.Recently, in Cellectricon AB and Gyros AB v. Fluxion Biosciences Inc. (NDCA) a status report was provided to the juge noting the progress of four patent reexamination proceedings corresponding to the patents-in-suit. (7,470,518; 7,390,650; 7,563,614; and 5,376,252) The ‘252 was subject to ex parte patent reexamination and recently concluded with its claims being confirmed, the other three patents were subjected to inter partes patent reexaminations that are still in progress. In one of these three cases claims were also confirmed by the examiner, but subject to appeal to the BPAI. Based on the positive developments, the plaintiff patentee sought to lift the stay. However, in determining whether or not to lift the stay, the judge was troubled  by the seemingly inconsistent inter partes patent reexamination results.Two of the three patents ininter partes patent reexaminations were related, one was the parent of the other. Both patents included the same claim language, and were rejected based upon the same prior art reference. Yet, the parent was allowed over the reference, while the child was not, the court pointed out this seeming inconsistency, noting: (full decision here)The PTO has initially rejected the ‘518 patent claims while simultaneously upholding the reexamined ‘614 patent claims. Notably, the ‘614 patent is the parent of the ‘518 patent, and they share a common specification. Both patents also share a claim limitation requiring application of fluids through three or more outlets. In the ‘518 Office Action, the examiners determined that the U.S. Patent Publication No.2002/0182627 by Wang et al. (“Wang”) anticipates the claims at issue because Wang discloses “multiple reagent channels feeding the portion of the channel where the biosensor is located.” Dkt. No. 131-2 at 9. Nine days later, the same examiners issued an Office Action in the ‘614 patent reexamination. But this time, the examiners confirmed the validity of the ‘614 patent claims, noting that “[w]hile Wang does appear to teach sequential application of multiple fluids through a single outlet, Wang does not clearly teach or suggest application through 3 or more outlets . . . .” Dkt. No. 120-3 at 5. In other words, the examiners appear to reach conflicting conclusions as to whether the Wang prior art reference discloses “multiple outlets.” The parties note that briefing and Office Actions in 2011 should clarify the inconsistency. Although the court is generally reluctant to stay a case because of the potential delay in obtaining a final resolution from the PTO or the Federal Circuit, here, the court finds that there is a legitimate basis for temporarily staying the case to see how the reexamination process will resolve the apparent conflict.The stay was lifted as to the ‘252 Patent, the court will monitor the progress of the inter partes cases further before lifting the stay with respect to those patents.This case was brought to my attention by the great Docket Navigator.

Typically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to move forward with the litigation. For example, where claims are confirmed/allowed, a judge is likely to consider lifting the stay.

Recently, in Cellectricon AB and Gyros AB v. Fluxion Biosciences Inc. (NDCA) a status report was provided to the juge noting the progress of four patent reexamination proceedings corresponding to the patents-in-suit. (7,470,518; 7,390,650; 7,563,614; and 5,376,252) The ‘252 was subject to ex parte patent reexamination and recently concluded with its claims being confirmed, the other three patents were subjected to inter partes patent reexaminations that are still in progress. In one of these three cases claims were also confirmed by the examiner, but subject to appeal to the BPAI. Based on the positive developments, the plaintiff patentee sought to lift the stay. However, in determining whether or not to lift the stay, the judge was troubled  by the seemingly inconsistent inter partes patent reexamination results.…

Continue Reading Court Confused by Patent Reexamination Results