Scott McKeown

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Congress Prepares to Tackle Contentious Patent Reform Issues Once More.As Congress begins to finalize key committee assignments and focus on legislative agendas for 2011, patent reform once again finds itself on the “to-do” list. While previous efforts to pass a comprehensive reform bill (S.515 being the most recent incarnation) have been hampered by powerful lobby groups, some genuine optimism seems to exist on the prospect of reform this year. However, the buzz around DC (e.g., last week’s DC Bar program) is that  S.515 will be at least slimmed down, if not broken out into separate bills.One of the more interesting proposals rumored to be under considerationis the creation of a post grant opposition proceeding specifically designed for “business method patents.” (Article 27 of TRIPS be damned?). Other proposals discuss dropping the damages and/or inequitable conduct initiatives altogether as best handled by the CAFC (i.e., Uniloc & Therasense).While staffers have discussed a February timetable for proposals, some bills appear to be targeted for next week (January 24th). Ever the cynic, I am left wondering whether the momentum behind splitting up S.515 into components will result in a Congressional land grab of sorts? Here too, it may be that the “first to file” gets all the glo

As Congress begins to finalize key committee assignments and focus on legislative agendas for 2011, patent reform once again finds itself on the “to-do” list. While previous efforts to pass a comprehensive reform bill (S.515 being the most recent incarnation) have been hampered by powerful lobby groups, some genuine optimism seems to exist on the prospect of reform this year. However, the buzz around DC (e.g., last week’s DC Bar program) is that  S.515 will be at least slimmed down, if not broken out into separate bills.

One of the more interesting proposals rumored to be under consideration…
Continue Reading Patent Reform Buzz Growing

Petition Filings Soar in Patent Reexamination

This past Monday, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. As previously noted here, Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:…
Continue Reading USPTO Warns Practitioners on Abusive Filings in Patent Reexamination

Widely Asserted Patent Claim Held Invalid at USPTO

The Rambus patent portfolio is well known, if not notorious, in the semiconductor industry. Over the years, Rambus has aggressively pursued licensing deals with Infineon, Hynix, Samsung and others. More recently, Rambus has been on the offensive against industry stalwarts such as Broadcom, Freescale, LSI, MediaTek, nVidia and ST Micro. 

As with any high value patent disputes, concurrent patent reexamination proceedings have been initiated at the USPTO against the Rambus portfolio. While these proceedings have largely co-existed without greatly impacting the Rambus litigation juggernaut, that may change as appeal proceedings conclude at the USPTO. 

In a Board of Patent Appeals & Interferences (BPAI) decision today, a decision rejecting Rambus’ U.S. Patent 6,034,198 in view of certain prior art was affirmed.…

Continue Reading Rambus Tripped Up at USPTO

Broadest Reasonable Interpretation (BRI) an Outer Limit?

In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent.  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).

In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.

However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.…

Continue Reading CAFC Reversal Cites Patent Reexamination Claim Interpretation

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency

 chart1(click to enlarge)

As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date.

In formulating the program, the USPTO noted that roughly 10% of Patentees file such statements. Thus, by presenting the option to waive the statement, arguably, 90% of filings could be accelerated by 3-5 months. Yet, initial response to the program seemed to indicate that Patentees favored this de facto delay.

Now that a larger number of proceedings have been subject to the program a clearer picture is emerging.Continue Reading Patent Reexamination Pilot Program Update

Dispute with USPTO Ripens for District Court?

As some may recall, in 2009 patent owner Sigram Schindler pursued a declaratory judgment action against the USPTO in the Eastern District of Virginia. (EDVA). The DJ action questioned the propriety of foreclosing district court review of USPTO action in the ex parte patent reexamination of Sigram’s U.S. Patent 6,954,453.

More specifically, the DJ action (previous discussion here) sought a determination as to whether the USPTO’s interpretation of 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a Patentee in an ex parte patent reexamination from obtaining judicial review of a decision of the Board of Patent Appeals & Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.

Rather than deciding the issue, the EDVA simply noted that the question was not yet ripe due to the absence of a BPAI decision. Yesterday, a decision issued (here) in the reexamination (90/010,017) affirming the examiners rejection of the reexamined claims. Seems like matters have ripened…..
Continue Reading Sigram Schindler Appeal in Patent Reexamination Fails

Substantial Evidence Found Lacking in Rejection of Means-Plus-Function ClaimYesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.The ‘503 Patent is directed to a spray nozzle technology which provides a circular shield about the spray nozzle to preclude certain particles from entering the spray field prematurely. Claim 5 is written in a Jepson format, and includes a means-plus-function element (don’t try this at home).  The MPF element is a “shielding means.” (read my earlier post on why MPF claims are very desirable in patent reexamination). The  shielding means recites a function of shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly . . . The structure of the specification included both a physical shield and an air barrier.In rejecting claim 5, the USPTO (Control No. 90/008,482) identified a prior art system which utilized a burst of air to clear clogged particles from a nozzle. Claim 5 was rejected as obvious in view of this system. Furthermore, Patentee’s evidence of secondary considerations of non-obviousness was rejected as being related only to the physical barrier embodiment.On appeal, the CAFC explained:The Board properly found that [the art reference] teaches modulating gas flow in the coating apparatus to control particle agglomeration. It is readily apparent, however, that this technique does not shield circulating particles from entering the initial spray pattern. [The art reference] teaches a way to remedy the blockage caused by particle agglomeration using bursts of air. In contrast, Glatt’s invention prevents the agglomeration from occurring in the first place. The Board’s finding that [the art reference] teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because [the art reference] does not teach shielding. [The art reference’s] air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simultaneously, and more importantly, neither of these functions constitutes shielding.With respect to the secondary indicia, the CAFC additionally pointed out that,To the extent the PTO asserts that Glatt needed to submit commercial success evidence from multiple embodiments for that evidence to be commensurate in scope with claim 5, this position is not consistent with our precedent. It seems unlikely that a company would sell a product containing multiple, redundant embodiments of a patented invention. The fact that Glatt’s commercial products only contain one type of shielding means does not make its commercial success evidence irrelevant. Under the PTO’s logic, there would never be commercial success evidence for a claim that covers more than one embodiment. Rather, we have consistently held that a patent applicant “need not sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success.” In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (quoting Applied Materials, Inc. v. Adv. Semi-conductor Materials Am., Inc., 98 F.3d 1563, 1570 (Fed. Cir. 1996)).Although Glatt was successful on appeal, the appeal delay is not without consequence. During the prosecution phase of the patent, while claim 5 was retained in original form, claim 8 was amended  (all other claims subject to reexamination were canceled). Claim 8 was originally indicated as allowable on May 20, 2008, but this claim will not exist in amended form until printed with the reexamination certificate. Thus, the appeal delay has effectively surrendered 3 years of patent term for claim 8 (the printing process will take at least another 12 weeks).

Yesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.…

Continue Reading CAFC Reverses Rejection in Patent Reexamination

DC Bar Program January 12, 2011Next week the DC Bar Association will host a “Patent Reform Update.” (details here). The panel will discuss the perceived needs for patent reform and the outlook for 2011. Speakers include:Paul R Michel, Federal Circuit Chief Judge (retired) Christal Sheppard, Chief Counsel for Patents and Trademarks and Chief Counsel for

…

Litigation Based Rationale Falls Flat Before USPTOAs the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,08

As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.

In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.

In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.
Continue Reading Admissions & Patent Reexamination Requests

Petition Filed to Reconsider Denial of 2nd Reexamination

As previously reported, the second attempt by Microsoft to invalidate U.S. Patent  5,787,449 failed on November 24, 2010. Since that time, the dispute involving this patent, (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)) has been accepted for review in the 2011 term by the Supreme Court (just like I always said it would..ahem).

In Microsoft”s petition for cert, they argue against the use of the clear and convincing evidentiary standard for proving a patent invalid. Microsoft argues that this standard should not apply when art is uncovered that was never before the PTO. In essence Microsoft argues that a lower standard, such as used by the USPTO during original prosecution (or patent reexamination) is more appropriate. The case may be the most closely watched patent law question in decades as the ruling could have a game changing impact on the value of patents and patent litigation practices.    

To date, however, Microsoft has not had any success invalidating the ‘449 Patent in patent reexamination.
Continue Reading Microsoft Seeks Director Review of I4I Reexamination Denial