Scott McKeown

Subscribe to Scott McKeown's Posts
Contact:Read more about Scott McKeown
starStar Scientific’s Belated Victory in Patent Reexamination, Missed Opportunity?

Last week, Star Scientific’s ex parte patent reexaminations (90/009,372 & 90/009,375) were favorably terminated based upon responses filed in November of 2009.  The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.

The 16 month delay between the November 2009 filing and March 2011 termination was the result of a procedural dispute. I discussed this development last Spring for the purposes of illustrating the importance of filing a proper interview summary in ex parte patent reexamination. As I pointed out at that time, misguided petition practice can turn a relatively minor miscue into a much larger problem.

In June of of 2009, a Maryland jury determined that Star’s patents were invalid. The jury also found that RJR did not infringe either patent. Star appealed to the Court of Appeals for the Federal Circuit (CAFC), oral arguments were heard on January 11, 2011. In their appeal, Star is seeking a new trial, alleging that RJR tainted the jury by referencing improper evidence.

On Friday, Star issued a press release touting their patent reexamination results. But, with the CAFC appeal briefed and argued, does the reexamination have any relevance at all?
Continue Reading Patent Reexamination Success as Court Room Evidence

Patent Enforceability Key Factor In Patent Reexamination Eligibility, Not ExpirationIn patent reexamination strategy, especially concurrent to litigation, timing is everything.1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.But what about expired patents? Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, thus the litigation would continue at some point no matter what happened at the USPTO.The decision, found here, also noted some other factors tending to favor continuation of the litigation independent of the patent expiration issue. Unfortunately for Ameridose, typically, seeking a stay where some patents are not subject to patent reexamination is a non-starter; as it was here.The record does not specifically reflect the reason why the defendant did not pursue patent reexamination of the expired patent. However, it seems that Ameridose viewed the expired patent as less likely to weigh in favor of plaintiff prejudice (should a stay be entered) since there are no damages going forward.But, let’s take a look at the patent expiration issue.Of course, it is perfectly appropriate for a patent to be reexamined after expiration. In fact, the USPTO provides a separate claim interpretation standard for such cases. Unlike reissue applications, which cannot be pursued after expiration, patent reexamination is based upon the enforceability of the patent. The period of enforceability is determined by adding 6 years to the date of patent expiration. 37 C.F.R. § 1.510(a)Looking only at the filing date, the ‘086 patent would seemed to have expired on November 24, 2006. However, this patent’s term was extended, due to the regulatory review delay of the Food & Drug Administration. The extended expiration date of the ‘086 patent is September 24, 2010. Thus, the ‘086 patent remains enforceable (for past damage purposes) until September 24, 2016.Surely, had patent reexamination been pursued, relief would not have been possible by operation of intervening rights. This is because an expired patent may not be amended. Still, the patent could have been invalidated by patent reexamination, and the odds of staying the case would have been greatly improved.This case was brought to my attention by the great Docket Navigator.

In patent reexamination strategy, especially concurrent to litigation, timing is everything.

1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)

2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)

3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.

But what about expired patents? 

Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination,…

Continue Reading Patent Reexamination & Expired Patents

BPAI Sides with AccushnetAs reported here last January, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293,

…

S.23 Exits Senate with Major Provisions IntactAs expected, S.23, now known as the America Invents Act breezed through a Senate vote today. (95-5) Touted as a jobs bill, most major provisions remain intact. Perhaps the most significant change proposed in the reform bill is the end of the  first to invent system in favor of

…

Undoing a Stay Pending Patent Reexamination?…UnlikelyWhere an order has been granted to stay a patent litigation pending the outcome of a reexamination of the patent-in-suit, there is little likelihood that patent owner will be able to successfully appeal the decision ordering the stay of litigation. Such orders are generally not appealable, because they are not considered final decisions.  See Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983). There is an exception where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See Slip Track Sys., Inc. v. Metal-Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).Federal courts have often found jurisdiction to review stays in favor of state court suits when the state court judgment would have a fully preclusive effect on the federal action or moot the federal action entirely.  See , e.g. , Cone , 460 U.S. at 10; Terra Nova Ins. Co. v. 900 Bar, Inc. , 887 F.2d 1213, 1218-21 (3d Cir. 1989). Stays in favor of administrative proceedings are similarly reviewed on an “effectively out of court” standard. See Gould , 705 F.2d at 1341; Hines v. D’Artois , 531 F.2d 726, 730-32 (5th Cir. 1976).It is difficult to identify many circumstances in which an “effectively out of court” situation would be presented for substantive issues based on concurrent reexamination. Of course, that doesn’t stop desperate plaintiffs from attempting this “Hail Mary Pass” of legal maneuvers.U.S. Patent 4,935,184, assigned to Sorenson Research & Development is at issue in Sorenson v. Lexar Media (NDCA). The ‘184 Patent is also the subject of an ongoing ex parte patent reexamination. The reexamination proceeding has reached the appeal stage; all claims stand currently rejected. With their court action stayed for some two years time awaiting the results of the patent reexamination, the plaintiff argued that two year delay was a violation of due process. This argument was then pursued to the CAFC. The CAFC considered the issue last week (here). As no surprise, the Hail Mary attempt failed. The CAFC explained, consistent with the well established case law cited above, that:Perhaps Sorenson should have been a bit more creative than opting for the Hail Mary. As one recent NDCA plaintiff can attest, the “end-around” is much more successful in lifting a stay pending patent reexamination in the NDCA.

Where an order has been granted to stay a patent litigation pending the outcome of a reexamination of the patent-in-suit, there is little likelihood that patent owner will be able to successfully appeal the decision ordering the stay of litigation. Such orders are generally not appealable, because they are not considered final decisions.  See Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983). There is an exception where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See Slip Track Sys., Inc. v. Metal-Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).

Federal courts have often found jurisdiction to review stays in favor of state court suits when the state court judgment would have a fully preclusive effect on the federal action or moot the federal action entirely.  See , e.g. , Cone , 460 U.S. at 10; Terra Nova Ins. Co. v. 900 Bar, Inc. , 887 F.2d 1213, 1218-21 (3d Cir. 1989). Stays in favor of administrative proceedings are similarly reviewed on an “effectively out of court” standard. See Gould , 705 F.2d at 1341; Hines v. D’Artois , 531 F.2d 726, 730-32 (5th Cir. 1976).

It is difficult to identify many circumstances in which an “effectively out of court” situation would be presented for substantive issues based on concurrent reexamination. Of course, that doesn’t stop desperate plaintiffs from attempting this “Hail Mary Pass” of legal maneuvers.
Continue Reading Can You Appeal A Decision to Stay Your Case?

Senate Bill Heads for Home Stretch this WeekWith Senator Feinstein’s amendment to strip out the first-to-file provision now defeated, it seems that the American Invents Act is headed for a vote this week. The cloture process invoked at the close of last week will effectively draw debate to a close this week, and, perhaps more

…

What Can be Fixed with a Certificate of Correction?One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided 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; simple enough.But, what happens when a COC seems to embrace substantive change?Is the patent now invalid?Are intervening rights created?Is there any effect at all? Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:13. An apparatus for decoding a compressed digital video signal, comprising:a means for receiving a compressed digital video bit stream; anda means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.This situation seems analogous to an intervening rights defense for patent reissue. In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.The court is correct. The question here is not one of intervening rights, but validity of the COC.For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.

One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided 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; simple enough.

But, what happens when a COC seems to embrace substantive change?

Is the patent now invalid?

Are intervening rights created?

Is there any effect at all? …
Continue Reading Can a Certificate of Correction Go Too Far?

Patent Reform & the Red Herring Patent Interference Argument

As the patent reform debate continues on the floor of the Senate, the expected battle against the so-called “first inventor to file” (FITF) began today. Senator Feinstein D-CA, broke from the party line and assailed the proposed FITF provision as inefficient, encouraging incomplete filings, and disadvantaging small inventors. Sen. Feinstein had an impressive understanding of these very complex issues.

In attempting to rebut Sen. Feinstein’s position, two arguments were consistently repeated. First, it was argued that the “rest of the world” had a first inventor to file system. Ironically, this argument was made by the same folks beating the “America is the greatest innovator in the world” drum.

The second argument, was more troubling to me as a practitioner. This argument, justified the change to a FITF system based upon extreme patent interference statistics. In my opinion, the patent interference argument is a complete red herring.
Continue Reading First Inventor to File vs. First to Invent

S.23 (Manager’s Amendment) Primed for VoteS.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.Significant changes include a provision to end fee diversion, as well as some changes to the proposed proposed post grant landscape.The major post grant refinements of the amendment are as follows: -A transitional post grant proceeding (page 9) specific to business methods was added to S.23. This can be thought of as a special window, of limited time (4 year sunset provision) to challenge a business method patent (if sued, or charged with infringement of a qualifying patent).The business method provision also calls out the ability to stay a district court proceeding and codifies the current factor based analysis of the courts. The provision provides for interlocutory appeal of the denial of a stay. Senator Schumer D-NY commented on the floor today that he could not imagine a case that would not be stayed under this transitional program.  So, long story short, if you have a business method patents sue now….otherwise you might be forced to wait out the sunset of this provision.-a further post grant provision was added to clarify that a case cannot be stayed for post grant review is a motion for a preliminary injunction is pending.Other changes of interest, not relating to post grant practice:-Added a provision to discount multi-track program for small entities added by 50%.-Deleted venue and damage provisions (deemed moot by recent court action). Most of the actual floor debate had absolutely nothing to do with patent reform, or the manager’s changes. Instead, several democratic senators sought to include provisions relating to federal spending /debt ceiling, and salary controls for Congress should the gov’t be shut down.The “First Inventor to File” provision remains intact for now, although several Senators paid lip service to this aspect of the bill in anticipation of challenges.Once through the Senate, as seems inevitable now, the House will issue a companion bill, differences will then be reconciled. Senator Leahy stated at one point today that all of this could happen quickly, and a bill should be ready for presidential signature “very soo

S.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.

Significant changes include…
Continue Reading Patent Reform Amendments Introduced

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action.
Continue Reading Cost Benefits of Concurrent Patent Reexamination