Scott McKeown

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NTP Patent Reexaminations & Key Patent Reissue Cases

With not much going on between holidays, a look forward to 2011 shows some interesting post grant issues teed up at the CAFC.

Oral arguments have been scheduled for In re Tanaka (January 10), In re NTP (February 10), and In re Mostafazadeh (February 11). (CAFC schedule here)

As a reminder In re Tanaka, (on appeal from the BPAI decision of last December) will explore whether or not a reissue application is proper where the only defect identified in the issued patent is the failure to present additional dependent claims.  At the BPAI, the Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.

Of perhaps greater interest in the patent reissue area is In re Mostafazadeh. This case will explore the boundaries of the recapture rule as it relates to broadening reissues. Specifically, the CAFC will have an opportunity to provide feedback to the USPTO on the continued viability of Ex parte Eggert 67 USPQ2d 1716 (BPAI 2003) in view of North Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). The USPTO has taken the position that Eggert is no longer binding on the Office. As a result, the Office has considered recapture to foreclose presentation of an intermediate claim scope in patent reissue where a broader claim limitation was surrendered in original prosecution.

Finally, the NTP patent reexaminations of NTP v. RIM fame finally get their day in court.
Continue Reading CAFC Slates Patent Reexamination/Reissue Disputes for Early 2011 Resolution

 Year in Review & 2011 Outlook

As I mentioned last week, nothing says “holiday spirit” like a podcast on patent reexamination/reissue.

Recently, I recorded a podcast for LexisNexis discussing the patent reexamination and patent reissue stories of 2010, and looked forward to prominent cases and expected changes in 2011.  Readers of the blog may recognize…

Lear Doctrine Avoided by Metabolite?

In a post last week, it was reported that U.S. patent 4,940,658, the subject Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted) had withstood an ex parte patent reexamination challenge at the USPTO. Specifically, the BPAI reversed the examiner rejection of claims 13, 15-17 and 33 and refused to reconsider their decision in the face of a rare patent examiner request for rehearing (90/008,305).

Aside from the ongoing patent battle raging between Lab Corp. and Metabolite, there is also a contractual dispute before the United States Court of Appeals for the Tenth Circuit involving these same companies. Metabolite is arguing that Lab Corp. unlawfully terminated an earlier licensing agreement. In order to have lawfully terminated their agreement, Metabolite argues that Lab Corp. must prove their products do not infringe the ‘658 Patent, but they have lost this battle at trial. Likewise, Metabolite argues that if Lab Corp is attempting to argue lawful termination based upon patent invalidity (i.e., Lear Doctrine), the BPAI has recently disproven this theory as well.
Continue Reading LabCorp’s Failed Patent Reexamination Challenge At Issue in Contract Dispute

Parallel Patent Reexaminations Given Little Weight at ITC

As detailed in past posts, an ongoing patent reexamination may help defendants stave off an injunction in district court. For example, in Flexiteek v. Plasteak,  (S.D. Fla. 2010) (Cohn, J.), the district court opted to stay the enforcement (order here) of the permanent injunction based upon the status of the related patent reexamination. At the ITC however, patent reexaminations are viewed as a routine occurrence.

As explored in the ITC action initiated by Tessera Inc., In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, 2008 WL 2223426 (Int’l Trade Comm’n May 27, 2008), it is next to impossible to stay an ITC proceeding pending an ongoing patent reexamination. This is due to the ITC’s statutory mandate to conclude investigations within a strict time frame.

Having lost the battle to stay the case, the remaining Tessera defendants cited the existence of the ongoing patent reexamination as a basis to avoid an exclusion order. The defendants asserted, that the public interest analysis required by 19 U.S.C. § 1337 (d)(1) was akin to the factors enumerated in eBay Inc. v. Mer-cExchange, L.L.C., 547 U.S. 388 (2006). In arguing for the Ebay factors, the defendants emphasized that money damages may be more appropriate for a “licensor” such as Tessera and that there would be no irreparable harm.

Yesterday, the CAFC contrasted the principles of equity applied in district courts to the statutorily mandated exclusion order of the ITC in Spansion v. ITC, and affirmed the ITC’s treatment of the ongoing patent reexaminations as largely irrelevant.
Continue Reading Ebay Factors Irrelevant to ITC Exclusion Orders

Intellectual Property Subcommittee Formed

Yesterday, House Judiciary Committee Chairman Elect Lamar Smith (R-Texas) announced the formation of an Intellectual Property Subcommittee. As pointed out last month, patent reform remains high on the Chairman Elect’s agenda.

In explaining the purpose of the subcommittee, Congressman Smith explained (announcement here):

One important change is the…

In re Meyer Denies Late 1.131 Declaration Evidence

Due to the limited prosecution window in patent reexamination compared to regular patent application prosecution, submission of declaration evidence under 37 CFR § 1.131 and/or 37 CFR § 1.132 is far more commonplace. (See some of my June 2010 posts for further discussions on declaration practice).

U.S. Patent 5,501,404 is directed to a manure spreader (who knew one needed anything more than a blog for that). The ‘404 Patent is the subject of ex parte patent reexamination 90/010,007. There were two main disputes during the reexamination prosecution, (1) whether or not a parent of the ‘404 Patent supported an amendment introduced during the reexamination for priority purposes, or, alternatively (2) whether the Patentee could “swear behind” intervening prior art from the date of the CIP application underlying the ‘404 Patent (which included support for this claim feature).

In pursuing issue (2) before the USPTO, the Patentee failed to present antedating declaration evidence under 37 CFR § 1.131 until after final rejection. An Advisory Action issued indicating that the declaration evidence had been entered, but explained that it was deficient with respect to the required diligence showing. Days prior to filing the Notice of Appeal to the BPAI, supplemental declaration evidence was filed. This evidence was not entered – – on appeal the examiner’s rejections were affirmed by the BPAI. The refusal to enter the supplemental declaration evidence was explained by the Board as a petitionable issue, that was within the discretion of the examiner.

The Patentee then pursued their case to the CAFC.
Continue Reading CAFC Sides with USPTO in Patent Reexamination Declaration Dispute

Change on the Horizon for 2011

With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot programs are being introduced, and the pendency of reexamination proceedings is slowly improving. (I will post a podcast next week going through the full 2010 retrospective, so cancel those holiday plans!)

Looking forward to 2011 there is still significant uncertainty as to the status of patent reform, at least the kind expected from Congress. Will this be the year that something….anything…..comes out of Congress? Patent Reform is still on the minds of Congress, perhaps more so than in past years as it has the potential to be sold as a no-cost economic stimulus. Yet, courts and the USPTO continue to drive the real change in U.S. patent law, especially as it relates to post grant practice before the USPTO.

So, what can we look forward to in 2011?

Aside from the never ending patent reform drama, the CAFC is slated to decide three important patent reissue cases this year, In re Tanaka, In re Staats, and In re Mostafazadeh. Further, CAFC guidance on the inequitable conduct standard is imminent in Therasense, Inc. v. Becton Dickinson and Co. Meanwhile, the Supreme Court is considering perhaps the most important patent litigation case since Festo in i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp.

Finally, and perhaps of most interest to me, the USPTO is working on a new rules package to overhaul aspects of patent reexamination and patent reissue practice.
Continue Reading Post Grant Expectations For 2011

Detroit_sealass=”alignleft size-thumbnail wp-image-4707″ title=”Detroit_seal” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/12/Detroit_seal-150×150.jpg” alt=”Detroit_seal” width=”150″ height=”150″ />In a teleconference with reporters on Thursday, December 16, 2010, Commerce Secretary Gary Locke – whose department includes the Patent Office – announced that the U.S. Patent and Trademark Office will open its first-ever satellite office in Detroit in the summer of 2011.  Also during this teleconference, it was stated that Detroit will be the first in what could be a few satellite offices scattered around the country (Denver is known to be making a strong push for a satellite office).   The objective of the satellite offices is to increase retention of the examining corps, as well as to increase the number of examiners, as the Office attempts to decrease the ever-increasing backlog of pending patent applications.  According to the Associated Press, officials said Detroit was chosen because of the area’s high percentage of scientists and engineers — many with auto industry background — and the region’s major research universities. Alternatively, PTO insiders indicate that Detroit already has a Department of Commerce facility that helps sidestep congressional red tape. (besides, no point having examiners distracted by competitive baseball and football teams, works in DC after all)
Continue Reading USPTO to Open Satellite Office in Detroit

Upcoming CLE Reviews the Impact of Claim Drafting Defects

Although I try to keep the shameless self promotion to a minimum (stop chuckling)….

If like me you are stuck working next week, what better way to spend it then to listen to my glorious monotone voice! Monday December 20, I will participate along with my…

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USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105

As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered persuasive, the examiner must be able to identify a nexus between the merits of the claimed invention and the evidence of secondary considerations. The term “nexus” identifies a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. In the vast majority of cases involving such evidence, the required nexus is deemed insufficient.

Yesterday, a typical rejection of such evidence was once again demonstrated by the BPAI in Ex Parte Smiths Interconnect Microwave Components. Inc. Interestingly, the Patentee argued that a nexus was demonstrated as the sales figures provided related to the product described in their patent. In rejecting this nexus, the BPAI relied on Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI 1990). The Board explained the holding of Remark as clarifying that [i]n civil litigation, once a prima facie nexus is demonstrated the burden switches to the opposing party to show that commercial success was due to extraneous reasons, while in ex parte proceedings the USPTO lacks the evidentiary means to show that commercial success is due to reasons other than the merits of the claimed invention.

Yet, the above noted case predates the enactment of 37 CFR § 1.105. Rule 105 provides the very evidentiary means to explore deficiencies in submitted declarations.
Continue Reading Requests for Information in Ex Parte Patent Reexamination