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Upward of 70% of Patent Reissue Filings Include a Defective Oath

oaths

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As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal.
Continue Reading Defective Oaths Plague Patent Reissue Filings

Nevada Court Rules Patent Owners Control DelayBack in 2009, TableMAX IP Holdings sued Shufflemaster for infringement of U.S. Patent 6,921,337. The ‘337 Patent relates to a multi-player card gaming system. In June of 2010, Shufflemaster filed an ex parte request for reexamination citing various prior art references, including an Atari Blackjack game manual. (The Atari art is not especially relevant to this post. But, it makes me happy that I can now prove to my parents that I was not wasting my youth. Turns out I was a young visionary preparing for my career as a patent attorney through intense study of future prior art systems, take that mom!!)The request was granted on August 2, 2010. Shortly thereafter, Shufflemaster moved to stay the case. In granting Shufflemaster’s request, the court went through the familiar factors, and dismissed the plaintiff’s prejudice argument based on the nature of the ex parte proceeding. The court reasoned that Patent Owners control ex parte reexamination pendency, noting that defendants do not participate, and that appeal shouldn’t be necessary if the patent is valid.TableMAX IP Holdings, Inc. v. Shuffle Master, Inc. (D. Nev., 2009). Stay granted (here)Specifically, the court stated:Plaintiffs argue that the reexamination takes time which would cause unnecessary delay. However, this is an ex parte application by Defendant, which means that the Defendant is not permitted to have any further input. The deadlines are all in the control of the Plaintiffs. They are not required to take the maximum time to file the necessary documents or appeals. Any undue delay in the reexamination will not be caused by Defendants. If Plaintiffs’ patents are upheld, there will be no need to appeal–and Defendant may not appeal. (emphasis added)It is true that delay will not be caused by the defendants (assuming they don’t file additional requests). Yet, undue delay in the reexamination will also not be caused by the plaintiff. Patentees complain about the patent reexamination pendency of the USPTO. Only the USPTO controls the timing of office action issuance in patent reexamination and appeal pendency. Likewise, extensions of time are not granted as a matter of right in reexamination, and there is no continuation/RCE practice.Still, with such new programs as the Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings, the court’s rationale may become more compelling going forward. (the ‘337 Patent was filed prior to the effective date of the pilot progra

Nevada Court Rules Patent Owners Control Delay

Back in 2009, TableMAX IP Holdings sued Shufflemaster for infringement of U.S. Patent 6,921,337. The ‘337 Patent relates to a multi-player card gaming system. In June of 2010, Shufflemaster filed an ex parte request for reexamination citing various prior art references, including an Atari Blackjack game manual. (The Atari art is not especially relevant to this post. But, it makes me happy that I can now prove to my parents that I was not wasting my youth. Turns out I was a young visionary preparing for my career as a patent attorney through intense study of future prior art systems, take that mom!!)

The request was granted on August 2, 2010. Shortly thereafter, Shufflemaster moved to stay the case. In granting Shufflemaster’s request, the court went through the familiar factors, and dismissed the plaintiff’s prejudice argument based on the nature of the ex parte proceeding. The court reasoned that Patent Owners control ex parte reexamination pendency, noting that defendants do not participate, and that appeal shouldn’t be necessary if the patent is valid.
Continue Reading Patent Owner Control Over Ex Parte Patent Reexamination Pendency?

Cancellation of Dependent Claim Deemed “Amendment in Effect”If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense (35 USC § 252) Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.As demonstrated recently, even where an amendment is made to overcome a prior art rejection, such a changed claim can still be considered substantially identical to the previously issued claim. Courts have consistently held that it is not the verbiage of a claim that must be substantially identical. Instead, courts look to the difference between originally issued claim scope relative to the scope of claims exiting patent reissue and/or patent reexamination. Adding another layer of complexity to this calculus is the recent case of University of Virginia Patent Foundation v. General Electric Company.  In University of Virginia (here) an independent claim was considered to be “amended in effect” based upon the cancellation of a dependent claim. In arriving at this conclusion, the court explained “[a]lthough no formal amendment was made to Claim 1, it was amended in effect when Claim 4 was canceled and the scope of Claim 1 changed.” At issue in University of Virginia is a patent relating to magnetic resonance imaging (MRI). In explaining how claim 1 could be “amended in effect,” the court reasoned:[T]he Patent Foundation filed an Amendment under 37 C.F.R. § 1.111 and § 1.550 canceling dependent Claim 4 of the patent, which had recited “[t]he method of claim 1, wherein said magnetization recovery period has a time of zero.” The Patent Foundation explained that it canceled the claim “because it does not properly depend from claim 1 because a ‘magnetization recovery period [that] has a time of zero’ does not ‘allow[s] [sic] T1 and T2 relaxation before the start of the next sequence cycle,’ as required by the magnetization recovery period of claim 1. Stated simply, a finite period of time must occur for T1 and T2 relaxation to occur, and thus a magnetization recovery period that has a time of zero is inconsistent with claim 1. . . Based on the Patent Foundation’s amendment, the PTO withdrew all of its objections to the claims except for those pertaining to Claim 4, which was canceled, and issued the reexamination certificate on May 4, 2010. In its statement of reasons for patentability, the PTO declared that “the claimed ‘magnetization recovery period’ is interpreted to correspond to a finite period of time (i.e., greater than zero) that allows substantially complete T1 and T2 relaxation to occur—i.e., relaxation to thermal equilibrium of both the longitudinal component and the transverse component—as opposed to partial or substantially incomplete relaxation.”. . . In order to overcome the PTO’s initial rejection of Claim 1 during reexamination, the Patent Foundation voluntarily canceled dependent Claim 4, the terms of which provided for a magnetization recovery period of time zero. I held above that prior to the cancellation of Claim 4, the magnetization recovery period in Claim 1 included the option of a period of time zero. After the cancellation, it is undisputed by the parties that the recovery period in Claim 1 does not include the option of a period of time zero. Thus, the amendment effected a change in meaning in Claim 1. Although no formal amendment was made to Claim 1, it was amended in effect when Claim 4 was canceled and the scope of Claim 1 changed.Critics of ex parte patent reexamination will often point to the roughly 25% of  cases in which all claims are confirmed. Yet, as previously pointed out, additional disclaimer and prosecution history of a patent reexamination concurrent to litigation can have a significant impact on litigation claim construction. Thus, these statistics do not tell the full story as significant victories may be achieved with respect to improved claim construction positions.Likewise, even where seemingly inconsequential claim changes are made, wiping out up to six years of infringement damages is a significant victory. Going forward, in view of cases such as University of Virginia, prosecution history disclaimers may be increasingly leveraged as “amendments in effect” for the purpose of asserting an intervening rights defen

If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense (35 USC § 252) Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.

As demonstrated recently, even where an amendment is made to overcome a prior art rejection, such a changed claim can still be considered substantially identical to the previously issued claim. Courts have consistently held that it is not the verbiage of a claim that must be substantially identical. Instead, courts look to the difference between originally issued claim scope relative to the scope of claims exiting patent reissue and/or patent reexamination. Adding another layer of complexity to this calculus is the recent case of University of Virginia Patent Foundation v. General Electric Company.  In University of Virginia (here) an independent claim was considered to be “amended in effect” based upon the cancellation of a dependent claim.
Continue Reading Intervening Rights Created by Claim Cancellation in Patent Reexamination

Late Amendment Tips Scales in Favor of DefendantsLast Wednesday, Judge Davis (EDTX) was asked to revisit a motion to stay an ongoing litigation between SouthWire Company v. Cerro Wire, et al. pending concurrent patent reexamination. Previously, the judge had denied a request to stay the case without prejudice (U.S. Patent 7,557,301). In the previous decision, Judge Davis reasoned that as the dispute is between direct competitors, such a stay could prejudice the plaintiff.After the earlier denial, patent reexamination proceedings continued on not only for the ‘301 Patent, but also its parent, U.S. Patent 7,411, 129. The ‘129 is subject to inter partes reexamination (requested by defendant Cerro).Recently, an attempt to amend the ‘129 Patent was denied as untimely since it was not introduced prior to the Action Closing Prosecution (ACP).  However, the ‘301 Patent was not as far advanced, and, after a first action, an amendment was submitted. (June 2010). In deciding the renewed request to stay the case, the court found that the amendment tipped the scales in favor of a stay.The court (decision here) explained:. . . Southwire’s inconsistent statements to the PTO favor a stay. In pursuing its patent claims in this Court, Southwire contends the ‘301 patent claims are valid. However, Southwire stated to the PTO that the revised claims, “particularly as amended, are not anticipated or rendered obvious by the cited prior art.” Id. at 9 (emphasis added). Southwire chose to preliminarily amend its claims, and it is upon those particular amendments that it now asserts the ’301 patent is valid over the prior art. Accordingly, it would waste the Court’s time and resources to construe the original ’301 patent’s claims. A stay would simplify and resolve any inconsistencies between Southwire’s representations to the Court and the PTO regarding the scope and validity of the ’301 patent. Southwire’s inconsistent positions regarding validity and its amendments changing the ’301 patent’s scope before the Court has conducted a Markman hearing strongly favor staying this case.With respect to the impact of the ongoing reexamination of the parent case, the court reasoned:Reexamination is not necessarily such an extraordinary circumstance that justifies a stay, and the Court previously denied a stay in this case. However, the specific facts here tip the scales in favor of a stay: Southwire substantively amended the independent claims of the patent-in-suit to avoid the prior art cited in the reexamination, Southwire has made inconsistent representations regarding the validity of the asserted claims, the Court has not yet construed the claims, and the PTO’s rejection of the parent patent has proceeded to the appeal stage of the reexamination proceedings. Standing alone, these factors do not merit a stay pending reexamination; but in combination they do.Thus, even where a stay is initially denied, an advancing reexamination may present further opportunities for defendants. Practically speaking, amendment options for many Patentees are considered non-existent due to the potential creation of an intervening rights defense. For Patentees involved in parallel litigation, this latest development will further serve to reinforce the general aversion to such claim changes in patent reexaminati

Last Wednesday, Judge Davis (EDTX) was asked to revisit a motion to stay an ongoing litigation between SouthWire Company v. Cerro Wire, et al. pending concurrent patent reexamination. Previously, the judge had denied a request to stay the case without prejudice (U.S. Patent 7,557,301). In the previous decision, Judge Davis reasoned that as the dispute is between direct competitors, such a stay could prejudice the plaintiff.

After the earlier denial, patent reexamination proceedings continued on not only for the ‘301 Patent, but also its parent, U.S. Patent 7,411, 129. The ‘129 is subject to inter partes reexamination (requested by defendant Cerro).

Recently, an attempt to amend the ‘129 Patent was denied as untimely since it was not introduced prior to the Action Closing Prosecution (ACP).  However, the ‘301 Patent was not as far advanced, and, after a first action, an amendment was submitted. (June 2010). In deciding the renewed request to stay the case, the court found that the amendment tipped the scales in favor of a stay.
Continue Reading Changing Gear in Patent Reexamination Stalls Related Litigation

Lockwood Reexamination Gripe Goes Nowhere

As discussed last week, the case of Lockwood v. Sheppard, Mullin, Richter & Hampton was recently argued before the CAFC. Wasting no time, today, the CAFC affirmed the lower court ruling without comment. As I explained in last week’s post, this result is not at all surprising given the exchange during oral argument. The decision is correct in my view.

Providing a state law action for suing requesters would inevitably lead to any difference of opinion (as to the strength of a patent reexamination request) being litigated. For example, roughly 25% of ex parte reexaminations are concluded with all claims confirmed, this does not make those requests a “sham.”

A true sham filing is a criminal act, this seems to be lost on most commentators.
Continue Reading Sham Patent Reexamination Argument Goes Nowhere

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations.
Continue Reading New BPAI Appeal Rules Proposed

A Case for Suing the Wrong LawyersLast March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The 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.By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.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. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?At issue in the reexamination was whether or not the submitted references qualified as prior art. The Lockwood patent arguably benefited from a 1984 priority date (based on a parent CIP). A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984. The Requester provided no explanation of the right to priority of each claim (in order to apply the manual as intervening art), nor how the public use of a system could be considered in patent reexamination. (See 90/006,623 for more information, particularly the response filed 7/20/05 and the original request).Interestingly, 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 also added 22 new claims.The request that was filed would never be accepted today, it lumps rejections together, fails to identify key dates, claim interpretation, etc…but things were different prior to the creation of the Central Reexamination Unit in 2005. To be sure, the request was poorly reasoned, and should have been denied. Yet, even assuming Lockwood is allowed to pursue their claim at the state level (which seems very unlikely based upon the tenor of the CAFC questioning last week at oral argument) what is the real economic harm? Will Lockwood argue that they settled for too low an amount, would Sheppard counter with the seemingly poor legal advice Lockwood was following as a contributing factor?Seems to me that Lockwood sued the wrong attorneys if they were truly fooled, and harmed, by this alleged “sham” reque

Last March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)

In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The 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.

By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.

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. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?
Continue Reading Sham Patent Reexamination Dispute Before CAFC

The USPTO can Demonstrate the What, Where, Why, and HowThe affirmative defense of inequitable conduct is commonplace in most patent disputes. Indeed, many have labeled this defense a “plague” due to its over-use by defendants. The prevalence of inequitable conduct before the district courts is especially debated on the eve of the CAFC en banc review in Therasense, Inc. v. Becton Dickinson and Co. At issue in Theresense is the very foundations upon which an inequitable conduct defense is built. The CAFC will consider the degree of materiality necessary, as well as the degree to which intent may be inferred.A key issue under consideration by the CAFC in Therasense is:What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?As an affirmative defense inequitable conduct must be plead with particularity, no matter what the CAFC decides in Theresense.  Likewise, materiality is determined from the perspective of a reasonable examiner …..so, why not just have the USPTO demonstrate what they would have done in the form of an office action in patent reexamination?As Judge Folsom explained in striking an inequitable conduct defense in TiVo v Verizon Communications on October 28th (here), the perspective of what might have happened in examination can be fairly detailed:the Federal Circuit held that for “pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id at 1327. The “who” of the material omissions and misrepresentations concerns those individuals with a duty of candor and good faith in dealing with the Patent and Trademark Office (“PTO”). Id. at 1329. The “what” and “where” of the material omissions relate to “which claims, and which limitations in those claims, the withheld references are relevant to, and where in those references the material information is found[.]” Finally, a pleading needs to state the “particular claim limitations or combination of limitations that are supposedly absent from the information of record. Such allegations are necessary to explain both ‘why’ the withheld information is material and not cumulative, and ‘how’ an examiner would have used this information in assessing the patentability of the claims.” (citing Exergen Corp. v. Wal-mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009)).As pointed out in past posts, the filing of a request for patent reexamination parallel with litigation provides significant benefits aside from simply attacking the validity of an issued patent. With Theresense perhaps making the defense of inequitable conduct a bit more challenging in the near term, it may be that office actions in patent reexamination will be increasingly valued as road maps to demonstrating materiality.

The affirmative defense of inequitable conduct is commonplace in most patent disputes. Indeed, many have labeled this defense a “plague” due to its over-use by defendants. The prevalence of inequitable conduct before the district courts is especially debated on the eve of the CAFC en banc review in Therasense, Inc. v. Becton Dickinson and Co. At issue in Theresense is the very foundations upon which an inequitable conduct defense is built. The CAFC will consider the degree of materiality necessary, as well as the degree to which intent may be inferred.

A key issue under consideration by the CAFC in Therasense is:

What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

As an affirmative defense inequitable conduct must be plead with particularity, no matter what the CAFC decides in Theresense.  Likewise, materiality is determined from the perspective of a reasonable examiner …..so, why not just have the USPTO demonstrate what they would have done in the form of an office action in patent reexamination?
Continue Reading Therasense to Amplify Demand for Patent Reexamination?

Marked Increase in Patent Reexamination Filings for Fiscal Year 2010With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010.  This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)For insight into the post grant/litigation strategies driving the year-over-year increase in patent reexamination filings, check out PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. The program is offered in San Francisco January 10, 2011 and in New York  February 11, 2011. The webcast is available January 10th.I will co-chair both events and speak on the topic of Pre-Trial and Post-Trial Reexamination Strategies Concurrent with Litigation. The Hon. Paul J. Luckern of the International Trade Commission will comment on judicial perspectives of patent reexamination, and my partner Todd Baker will discuss reexamination and reissue practices. A USPTO representative (OPLA invited) will discuss inter partes reexamination petition practice, and corporate speakers will round out this compelling CLE progr

With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010.  This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)

Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)

As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)

For insight into the post grant/litigation strategies driving the year-over-year increase …
Continue Reading Patent Reexamination Filings at All Time High

Substantially Identical…More than Meets the Eye!An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road. As explained by the court, Aspex previously sued the defendants (Revolution and Marchon) for infringement of U.S. Reissue Patent RE37,545 (reissue of U.S. Patent 5,568,207). Claim 22 of the ‘545 patent was asserted against both defendants. In 2007, Revolution was found to infringe claims 22, effectively ending the case. Likewise, in 2008, Aspex settled with Marchon, dismissing their claims with prejudice.An unrelated third party requested ex parte patent reexamination of the ‘545 Patent in 2007. During the reexamination, previously re-issued claim 23 was amended and claim 35 was newly added. Upon completion of the reexamination, in 2009, Aspex once again sued Revolution and Marchon for infringement of amended claim 23 and new claim 35.The court found that the new features provided by amended claim 23 and new claims 35 were in fact already implied by the issued claims. Thus, the court determined that the claim changes resulted in a substantially identical claim scope to the previous version of the issued claims. Therefore, the court explained (decision here) that Aspex was barred from re-litigating these new claims against the previous defendants, reasoning:”Identical” does not mean verbatim, but rather means “without substantive change.” Slimfold Mfg. v. Kinkead Indus.810 F.2d 1113, 1115 (Fed. Cir. 1987). “Claims are not interpreted in a vacuum, but are part of and read in light of the specification.” addition of the words “having a horizontal surface” or “magnetic member surfaces” does not substantively change the scope of the original claim 23, but merely makes the claim more definite. .                     .                           .                           .The Revolution California Action was fully adjudicated on the merits. The dismissal release of the Marchon Settlement made clear that the settlement dismissed with prejudice as to any causes of action “any claim which could have been had by and between the Parties arising from or connected with” the Marchon California Action. Plaintiffs argue that it alleged legally separate causes of action in their complaint because claim 23 and claim 35 did not exist at the time the California Actions were being litigated. The reexamination of the ‘545 Patent does not entitle Plaintiffs to circumvent claim preclusion because the amended claims relate back to the original ‘545 Patent reissue date. (emphasis added)Interestingly, claim 23 was rejected as unpatentable in view of certain prior art during the patent reexamination. The claim was then amended to overcome the art of record with the above noted language; this fact was not analyzed by the court. As such, this case may be cited in the future for the proposition that–the amendment of a claim in patent reexamination to avoid the prior art does not necessarily equate to a substantial change in claim sco

An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?

This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.

Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road.
Continue Reading Court Labels Claims Transformed in Patent Reexamination Mere Disguise