Scott McKeown

Subscribe to Scott McKeown's Posts
Contact:Read more about Scott McKeown

The Five Reexamination Proceedings of Patent ReformAs discussed earlier in the week , the USPTO has proposed changes to ex parte patent reexamination practice (substantively untouched in the legislation), and has proposed to refine inter partes patent reexamination (this proceeding will remain viable during the multi-year transition period provided for in the pending bills). The

…

June Meeting to Consider Proposed ChangesAs discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).A short overview of each proposal is detailed next:Ex Parte & Inter Partes ProposalsStandardization of Patent Reexamination Request Formats (Proposals 1-2)Proposal 1 would require, as part of the presentation of the SNQ, an explanation of how the SNQ is different from issues previously considered by the Office. While an SNQ discussion should always explain how a technological teaching is “new,” the USPTO finds that this practice inconsistent. As such, Proposal 1 seems more of an attempt to codify a current best practice.  Proposal 2 also appears to be an attempt to codify a current best practice of identifying all limitations of a claim. Interestingly, the proposal states that this can be done via claim chart or narrative, but not both.SNQ Management (Proposals 3-4)Proposal 3 would allow examiners to more readily group proposed SNQs as cumulative with respect to others unless Requesters explain why seemingly cumulative SNQs are unique. If an examiner finds cumulative SNQs, one will be selected as representative of the group.  Proposal 4 outlines the manner by which representative rejections are grouped by an examiner, and how they are appealed together with all adopted rejections. The selection of a representative rejection is not petitionable, however, Inter Partes Requesters may comment on the selection of a particular rejection (more on that below)Limiting Requester Declaration Evidence to Rebuttal (Proposal 5)Proposal 5  would require most third party declaration evidence to be submitted together with the request. Later submissions would be limited to rebuttal of points raised by the examiner or patent owner. Any submission of such evidence after the request stage would require a statement as to how the evidence is limited to issues newly raised.Limiting Patent Owner Amendments to First Action (Proposal 6)Proposal 6 arguably reflects current practice. Namely, amendments must be submitted before a final rejection unless directed to a matter of form, claim cancellation or the like. This proposal alludes to the fact that Patentees refusing to waive the patent owner statement may surrender their right to amend altogether. (more on the change to the pilot program below)Requiring Statement of Compliance with 35 U.S.C. § 305 (Proposal 7)Proposal 7would require all amendments to be accompanied by a statement explaining how the change is directed to overcoming an SNQ. The concern here is that changes may be made to claims for reasons unrelated to patentability, such as claim construction. Of course, such changes are already improper based upon 35 U.S.C. § 305. This statement would be an additional safeguard for defendants seeking patent reexamination parallel to litigation claim construction proceedings. (i.e., inequitable conduct opportunity)Clarify Petition Practice (Proposal 8)Perhaps the most immediately helpful aspect of the various proposals is provided below. The chart below clearly explains when it is appropriate to oppose the most common patent reexamination petitions.            Examples of Petitions Filed in Reexamination ProceedingsRelief requestedPetitionable?Opposable?Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648)Yes—1.181No.Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646)Yes—1.181Yes.Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357)No (but see 75 FR 36357in ex parte reexam)No.Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915Yes—1.181Yes.Extension of time to respond to an Office action by Patent Owner in ex parte reexamYes—1.550(c)No.Extension of time to respond to an Office action by Patent Owner in inter partes reexamYes—1.956No.Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2))NoNo.Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43)Yes—1.550(c)No.Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66)Yes—1.183No.Striking another party’s improper paper (or portion thereof) from the fileYes—1.181Yes.Protection of proprietary information being submitted under sealYes—1.59(b)Yes.Waiver of page or word limit requirementYes—1.183No.Review of refusal to enter amendmentYes—1.181Yes.Withdrawal of final Office actionYes—1.181Yes.Revival of terminated proceeding based on Patent Owner’s “unavoidable” delay and acceptance of late paperYes—1.137(a)No.Revival of terminated proceeding based on Patent Owner’s “unintentional” delay and acceptance of late paperYes—1.137(b)No.For jurisdiction to be transferred to the Office of Patent Legal AdministrationNoNo.Suspend inter partes reexam for “good cause” under 35 USC 314(c)Yes—1.182Yes.Terminate inter partes reexam based on estoppel under 35 USC 317(b)Yes—1.182Yes.Ex Parte Proposals OnlyMake Pilot Program for Waiver of Patent Owner Statement Permanent (Proposal 1)Proposal 1  would permanently adopt the Program for Waiver in ex parte patent reexamination proceedings.Allow for First Action Final for Patentees Refusing to Waive Statement (Proposal 2)Proposal 2 recognizes that although the Waiver Program provides a great opportunity for the Office to reduce pendency, to date, Patentees are not cooperating. (see my most recent case study on this issue here). This rule would essentially punish those Patentees that do not agree to the waiver, by issuing a first action final. If the Patentee agrees to waiver, a first action would issue together with the grant, otherwise, a provisional first action is issued with the grant, and after the statement period, a final action is issued.Inter Partes Proposals OnlyAbility to Dispute Representative SNQ Finding (Proposal 1)Proposal 1 would allow a Requester to present arguments directed to those rejections held in abeyance as cumulative. (to either the examiner or Board)Consolidate ACP/RAN Practice to More Traditional Final Rejection (Proposal 2)Proposal 2 would eliminate the ACP/RAN practice and replace it with a final office action. This proposal would require amendments to 37 C.F.R. §§ 1.949-1.953. (This change would shave considerable time off of pendency figures).Eliminate Cross Appeal Practice (Proposal 3)Proposal 3 would no longer allow third parties to appeal those rejections that are not adopted in cases where the claims stand rejected on other grounds. The PTO points out that this change would be consistent with appellate practice of the district courts.OtherIn addition to these proposals, the USPTO seeks feedback on the following general propositions:1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?3. Should the USPTO revise its existing page or word limits in inter partes reexamination following the request?4. Should the USPTO place any limitation or criteria on the addition of new claims by a Patent Owner in reexamination? If so, what kind of limitation or criteria?5. Should the USPTO change its interpretation of ‘‘a substantial new question of patentability’’ to require something more than ‘‘a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable’’? See MPEP §§ 2242, 2642. If so, how should it be interpreted?6. How much time should Patent Owners and Third Party Requesters ordinarily be given to submit a statement, response, or appeal where the time for filing the statement, response, or appeal is set by the USPTO rather than by statute?7. Under what conditions should the USPTO grant a Patent Owner’s request for an extension of time under 37 CFR 1.550(c) or 1.956, both of which provide that extensions of time may only be granted for ‘‘sufficient cause and for a reasonable time specified’’? 8. Should the USPTO require that any information disclosure statement (IDS) filed by a Patent Owner in a reexamination comply with provisions analogous to 37 CFR 1.97 and 1.98, and further require that any IDS filed after a Notice of Intent to Issue a Reexamination Certificate (NIRC) or notice of appeal be accompanied by:     (1) an explanation of why the information submitted could not have been submitted earlier, and (2) an explanation of the relevance of the information with regard to the claimed invention? 9. Under what conditions should a reexamination proceeding be merged with another reexamination or reissue proceeding? 10. What relief can and should be given to a Third Party Requester that shows that it did not receive a Patent Owner’s statement or response within a certain number of days after the date listed on the Patent Owner’s certificate of service? How many days and what kind of showing should be required? 11. Should the USPTO encourage and/or require that all correspondence in reexamination proceedings be conducted electronically (e.g., e-filing parties’ documents, e-mailing notices of Office actions and certificates)? 12. Should reexamination proceedings remain with the Board in cases where the Board has entered a new ground of rejection on appeal and the Patent Owner seeks to introduce new evidence and amendments? In particular, is it more efficient for three administrative patent judges or a single examiner to decide issues involving new evidence and amendments? 13. What other changes can and should the USPTO make in order to streamline reexamination proceedings?I will explore many of these issues in more detail in the weeks to come. Also, as I will be coordinating the ABA response to these proposals, I welcome any and all comments. (for those preferring private comment smckeown@oblon.com

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).

A short overview of each proposal is detailed next:…
Continue Reading USPTO Proposes Overhaul to Patent Reexamination Proceedings

USPTO Cuts Expenses to Account for $85-100 Million ShortfallIn an email today to all USPTO staff, Director Kappos explained that the agency will be unable to spend the $85-100 million in fees being collected in FY 2011. Thus, effective immediately, and likely beyond the end of FY 2011 (September 30, 2011) the following cost cutting

…

In re Lund Affirmed Per CuriamLast May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. Lund’s claim 1 is directed to a laptop computer. The first position is the usual clam-shell orientation (open), the second position enabled the user to rotate the screen and collapse it down on the keyboard in a tablet computer fashion. This was done by removing the screen from a slot connector, reversing the screen and re-inserting it to the connector, or by way of a flexible ribbon cable. (see below)The prior art showed reversible screens that could be moved between such positions, but the electrical connections were distinguishable from those shown in Lund’s patent, at least with respect to mechanical positioning. The orientation sought by Lund is shown below as illustrated in Figs 12 and 15 of the patent.During oral argument, the CAFC noted that the positional features argued were already present in dependent claims 2-8 of the Lund Patent. These claims were not subject to patent reexamination. In an awkward moment for the Patentee, Judge Lourie asked the Patentee why he was on appeal since claims 2-8 already captured what was being argued, and that these claims stood uncontested. Judge Lourie also pointed out that claim differentiation would seem to require a broader reading of claim 1. The Patentee did not have any meaningful rebuttal to these inquiries.Ultimately, the CAFC seemed to agree with the Solicitor that although the claimed electrical connecting means was limited to the structure of the specification, in this case the card or ribbon connector, the function recited did not require any specific mechanical orientation to achieve the recited electrical connection function. So, although other aspects of claim 1 required specific mechanical interaction between components, the function of the electrical connecting means required only connectivity. Absent the existence of the dependent claims, perhaps this case would have been a closer ca

Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.

The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.

Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. …

Continue Reading CAFC Affirms Rejection of Means Plus Function Claims in Patent Reexamination

Supplemental Examination Request to Invite Investigation?Under current law, inequitable conduct cannot be cured through patent reissue or patent reexamination. As such, one of the more interesting aspects of the proposed patent reform legislation is the concept of “Supplemental Examination.”  Supplemental examination, as currently proposed, will permit the patent owner to cure inequitable conduct resulting from violations of the duty of candor and good faith as well as the duty of disclosure with intent to deceive the USPTO so long as it is done promptly and prior to litigation.Of course, the USPTO Director will be able to continue to investigate issues of possible misconduct and impose sanctions such as those set forth in 37 CFR 11.18(c) such as striking a paper; referring a practitioner’s conduct to the Director of Enrollment and Discipline (OED) for appropriate action; precluding a party or practitioner from submitting a paper or contesting an issue; affecting the weight given to a paper; and terminating the proceedings in the Office. Thus, the concept of Supplemental Examination appears to be directed to gray areas and close calls, as opposed to providing a second bite at the apple for true “villains.”To reinforce the idea that Supplemental Examination is not meant to provide amnesty for gross misconduct, an amendment was added to H.R. 1249 to make clear that “fraud” is to be rooted out by the Director. Not surprisingly, industry groups are less than enthusiastic about this provision. The amendment (here), proposed by Congressman Goodlatte (VA) provides:(C) FRAUD.–No supplemental examination shall be commenced by the Director on, and any pending supplemental examination shall be terminated regarding, an application or patent in connection with which fraud on the Office was practiced or attempted. If the Director determines that such a fraud on the Office was practiced or attempted, the Director shall refer the matter to the Attorney General for such action as the Attorney General may deem appropriate. The Biotechnology Industry Organization (BIO) released the following comment on the Goodlatte amendment:The supplemental examination provision as passed by the Senate and originally included in the House bill would allow patent holders to seek a review of their issued patents at their own risk.  The Goodlatte amendment undercuts this provision by creating disincentives for patent owners to use the new procedure by having the U.S. Patent and Trademark Office (PTO) act as quasi-investigative body.Since disbanding the “fraud squad” years back, the Office has not proactively pursued inequitable conduct issues, that is, aside from the few cases presented to OED by the public, or that result from final court determinations. The USPTO has made clear that the agency is ill suited to pursue investigations into inequitable conduct due to a lack of resources, subpoena power, etc.It seems that the rationale behind the Goodlatte amendment is to ensure that supplemetal examination is not abused as a “get out of jail free” card by the unscrupulous—yet, such cases are the rare exception (despite the plague of inequitable conduct charges to the contrary in almost every patent litigation). The added provision would arguably require the Director to investigate every request for the sake of rooting out the rare exception. This duty would potentially turn every request into a witch hunt—no thank y

Under current law, inequitable conduct cannot be cured through patent reissue or patent reexamination. As such, one of the more interesting aspects of the proposed patent reform legislation is the concept of “Supplemental Examination.”  Supplemental examination, as currently proposed, will permit the patent owner to cure inequitable conduct resulting from violations of the duty of candor and good faith as well as the duty of disclosure with intent to deceive the USPTO so long as it is done promptly and prior to litigation.

Of course, the USPTO Director will be able to continue to investigate issues of possible misconduct and impose sanctions such as those set forth in 37 CFR 11.18(c) such as striking a paper; referring a practitioner’s conduct to the Director of Enrollment and Discipline (OED) for appropriate action; precluding a party or practitioner from submitting a paper or contesting an issue; affecting the weight given to a paper; and terminating the proceedings in the Office. Thus, the concept of Supplemental Examination appears to be directed to gray areas and close calls, as opposed to providing a second bite at the apple for true “villains.”

To reinforce the idea that Supplemental Examination is not meant to provide amnesty for gross misconduct, an amendment was added to H.R. 1249 to make clear that “fraud” is to be rooted out by the Director. Not surprisingly, industry groups are less than enthusiastic about this provision.
Continue Reading USPTO Required to Police Fraud Under H.R. 1249?

Patent Community Awaits Crucial DecisionYesterday, the Supreme Court heard arguments in Microsoft v. i4i . As discussed at length previously, Microsoft has 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

…

How Likely Is It to Recover At least 1 Original Claim?  One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011). As shown below, I have broken out ex parte and inter partes cases separately. Confirmed claims were those claims that were actively reexamined and indicated as confirmed in the reexamination certificate, or claims amended to include dependent claims only. The charts below represent the 807 certificates printed from February 2010 – February 2011.Ex Parte Patent Reexamination 59% of Cases Have 1 Claim ConfirmedInter Partes Patent Reexamination 41% of Cases Have 1 Claim ConfirmedThese survival rates demonstrate that there is much more to the story than the all-or-nothing USPTO statistics, and the combined cancellation/amendment figures of defendan

One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.

For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.

Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011).
Continue Reading Surviving Patent Reexamination

In Re Tanaka Decision on “Bullet Claims” Reversed at CAFCToday, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.In their decision to reverse the Board, the court explained:As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be “wholly or partly inoperative or invalid.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989). Second, “the defective, inoperative, or invalid patent” must have arisen “through error without deceptive intent.” Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent. . . . Judge Giles S. Rich wrote the Handel decision reversing the Board’s rejection of the reissue application. He explained that the reissue claims involved subject matter disclosed in the specification and thus were properly directed to “the invention disclosed in the original patent.” Id. at 944. In a footnote, Judge Rich remarked that “[t]he term ‘inoperative’ has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention.” Id. at 945 n.2 (quoting McGrady, Patent Office Practice 309 (4th ed. 1959)). Judge Rich added that because the original patent claims were all retained in the reissue application the “term ‘less’ [in Handel’s reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims.” Id. at 946 n.2 (emphasis in original). Thus “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” Id. While this court has since characterized that view as dictum, it has not departed from it. . . . Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observa-tion—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.In the dissent, Judge Dyk explains that where all the original claims are still present in the patent reissue proceeding, the addition of narrower dependent claims is a surrender of nothing (i.e., statute requires surrender of original patent). He also notes that the cases relied upon by the majority are distinguishable on their facts.In essence Judge Dyk seems to be saying that where a patent reissue application seeks only new, dependent claims, it is essentially a continuation application by proxy. I think the USPTO would agree. Certainly, the anti-continuation lobby present at the USPTO back in 2008-2009 spawned quite a few initiatives to combat continuation filings. Today’s decision is a very positive development for Patente

Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.…

Continue Reading CAFC Reverses USPTO on Important Question of Patent Reissue

Manager’s Amendment of H.R. 1249 Passed, Headed to FloorPatent Reform took another step in the direction of passing into law today. In a 32-3 vote, the Manager’s Amendment was passed, along with several small amendments, to the House floor. A full list of all proposed amendments may be found (here). Several deal breaking amendments were proposed, but failed, including a proposal to ditch the first inventor to file scheme, and another to utilize the SNQ standard for Inter Partes Review. Upon passage of H.R. 1249 (and amendments) to the floor, Chairman Smith explained,Today’s vote puts much-needed patent reform one step closer to enactment.  The America Invents Act updates our patent system to make it easier for innovators to produce new technologies that drive economic growth and generate jobs.This important legislation is long overdue.  The last major patent reform was nearly 60 years ago.  Since then, American inventors have helped put a man on the moon, developed cell phones and launched the Internet. But we cannot protect the technologies of today with the tools of the past. Technological innovation from America’s intellectual property is linked to three-quarters of our economic growth.  American IP industries account for over half of all U.S. exports and provide millions of Americans with well-paying jobs. In order to have a healthy economy, we must have a healthy patent system. These reforms discourage frivolous suits, enhance patent quality and streamline international principles. After six years of bipartisan efforts, I look forward to crossing the finish line on patent reform.Expect further political maneuvers on the House floor, still, patent reform is getting very close to becoming reality. 

Patent Reform took another step in the direction of passing into law today. In a 32-3 vote, the Manager’s Amendment was passed, along with several small amendments, to the House floor. A full list of all proposed amendments may be found (here). 

Several deal breaking amendments were proposed, but failed, including a proposal to…

Continue Reading America Invents Act (H.R. 1249) Heads to House Vote

Walker Process Allegation Defeated by Re-issuance of Original Patent ClaimsPost grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that Ecore’s U.S. Patent 6,920,723 was fraudulently procured and wrongfully enforced to monopolize the rubber acoustical underlayment market. The fraud allegations were based on the theory that, during the prosecution of the ‘723 Patent, Ecore intentionally withheld material prior art from the USPTO. (inequitable conduct). U.S. Rubber also alleged that Ecore threatened litigation to competitors, distributors, architects, and end-users, and communicated to them that they may not sell or purchase rubber acoustic underlayment from anyone else due to the ‘723 Patent. U.S Rubber asserted that  these threats were baseless, made in bad faith, and for anti-competitive purposes. (Walker Process Claim); other torts and unfair competition theories were also alleged.Prior to the suit, Ecore sought a broadening reissue of the ‘723 Patent. During the patent reissue proceedings, Ecore provided to the USPTO the allegedly withheld prior art materials. The ‘723 Patent was successfully reissued in November of 2010 with all original claims, and additional, broader claims. Shortly thereafter, Ecore moved for judgement on the pleadings (Rule 12 (c)) with respect to the Walker Process claim.In deciding the issue the court held:The MPEP states that “[a] reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications.” MPEP § 1440 (8th ed. 2010); see also 37 C.F.R. §1.176(a). In other words, the PTO fully examines a re-issuance as if it were presented for the first time. See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191 (Fed. Cir. 1997); see also (Pl.’s Resp. 2:14-16 (stating that “the reissue process is an entirely new application process based on the scope of claims, which was the basis of Defendant’s reissue application”).) Here, Defendant submitted its reissuance application with the allegedly invalidating prior art. (See RJN Exs. 2-8.) Even with the contentious prior art, the PTO issued RE41945 to Defendant, and did so after reviewing the patent as if for the first time. (RJN Ex. 1.) The re-issuance does not cure the alleged fraud, but it is dispositive of whether the PTO would have issued the original ‘723 Patent.Because 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 Claim One.Interestingly, the “but for” test has been proposed as a standard for inequitable conduct pleadings. Therasense, Inc. v. Becton Dickinson and Co. (CAFC 2011). (Note: Ecore is represented by Oblon Spivak)

Post grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.

A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”

In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that…
Continue Reading Patent Reissue Disproves Fraud Allegation