Scott McKeown

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Recapture and Formality Issues Bog Down Important Cases As shown in the charts above (click to enlarge images), we analyzed the 745 broadening patent reissues filed since 2005. A surprising 200 applications of the 745 were ultimately abandoned. While many of these applications may have been seeking to secure a claim scope that was precluded

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The Emergence of Patent Reexamination as a Litigation Bargaining Chip As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial. In order to avoid the stay of the litigation, plaintiff SRA was asked to agree to the following conditions:1. Within 15 days of this order, SRA shall narrow its asserted claims to 20. 2. Within 30 days of this order, defendants shall narrow their invalidity contentions to 3 anticipatory references and 3 obviousness combinations per claim. 3. Within 10 days after a claim construction order has been issued, SRA shall narrow its asserted claims to 10 per defendant (no more than 12 total). 4. Within 15 days after a claim construction order has been issued, defendants may amend their invalidity contentions to substitute new anticipatory references or obviousness combinations upon a showing of good cause. To establish good cause, defendants must show why the court’s claim construction requires amendment of their invalidity contentions.Although the above conditions were ultimately proposed by the Court, it appeared that the Defendants had proposed even further limitations. In explaining the denial of the motion to stay, contingent upon the above conditions, the court alluded to further defendant proposals.Moreover, with respect to those claims that survive reexamination, defendants argue that they should not be bound by the results of the reexamination unless SRA agrees to forgo its right to an examiner interview and that they should still be permitted to argue obviousness based on the combination of prior art references that were submitted for reexamination with prior art that was not submitted.While most think of patent reexamination in simple terms as a means to stay a litigation or invalidate patent claims, these are but the most basic of uses of a much more versatile litigation tool. Indeed, patent reexamination that is conducted concurent to litigation has been illustrated by past posts as of great strategic value in pre-trial and post trial applications.  As this new trend in creative motion practice demonstrates, patent reexamination is also bargaining chip defendants are wise to embrace.

As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.

In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial.
Continue Reading Horse Trading: Trends in Stays Pending Reexamination

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Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.

Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as  Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.”  As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.

Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues?
Continue Reading Curing Infringement Issues Through Patent Reexamination?

ass=”alignleft size-full wp-image-4062″ title=”CG98″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/CG98.png” alt=”CG98″ width=”175″ height=”229″ />On October 13th, the Federal Circuit held in Solvay v. Honeywell International that, in order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2), the prior invention must have been conceived in the United States. The precedential decision (here) relates to ozone friendly fluorocarbons commonly used in refrigeration and heat storage systems. At issue in the appeal was whether or not Honeywell’s reproduction of technology, conceived by a Russian contractor, invalidated Solvay’s patent claims under 102(g)(2).[1]

In reversing the district court’s finding of invalidity under 35 U.S.C § 102(g)(2), the CAFC concluded that Honeywell’s employees did not qualify as “another inventor” under section (g)(2) because (1) they were not involved in the conception of the technology and (2) those who had conceived the invention were outside of the United States.

102(g)(2) requires prior invention in the U.S. In contrast, 102(g)(1), which governs patent interferences, allows for prior invention in foreign countries as permitted by 35 U.S.C. § 104. So would there have been a different outcome given the facts reported in the decision if this dispute had occurred in a patent interference?Continue Reading CAFC Denies Outsourcing of Inventorship to Foreign Countries

Creative Motions Undermine Delay PrejudiceEarlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)In TDY Industries Inc., v. Ingersoll Cutting Tool Co., (W.D.P.A) Ingersoll filed a request seeking inter partes patent reexamination of TDY’s U.S. Patent 7,244,519 (95/001,417). The request for patent reexamination was made only two months after filing of the complaint with the court. The defendant moved to stay the case shortly thereafter, but the determination on the reexamination request remained outstanding. To address the issue of prejudicial delay, Ingersoll stipulated to a self imposed restraining order of sorts. Essentially, Ingersoll agreed not to deal in products allegedly covered by the ‘519 Patent for a predetermined time frame. In granting the stay, the court explained the weight given to the offer, noting:Turning to undue prejudice, the Court finds TDY’s complaints substantially mitigated by Ingersoll’s agreement to “no longer make, use, offer to sell, sell, import or distribute any [of the allegedly infringing] products in the United States, until the earlier of: (a) the date on which the [Patent] Examiner issues a Right of Appeal Notice . . . in the pending Reexamination, or (b) September 15, 2013, [i.e.,] 3 years away, a period longer than the average time between the filing of a reexamination request and issuance of a reexamination certificate.”Clearly, it is a rare defendant indeed that would offer a self imposed injunction in favor of a stay. Still, creative undermining of the Patentees most powerful argument, especially with respect to inter partes reexamination, may be a growing tre

Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).

Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)…

Continue Reading Stays Pending Patent Reexamination: Sweetening the Deal

Getting Your Case Stayed By Stipulated AccelerationMany inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?37 CFR 1.953(b) provides for an expedited Right of Appeal Notice (RAN). At any time after the Patentee’s response to the initial Office action on the merits in an inter partes patent reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a RAN. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding, and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a RAN limited to the identified issues shall be issued. See also MPEP § 2673.02 (II).In other words, significant portions of inter partes patent reexamination prosecution can be compacted, by agreement. Of course, litigating parties never agree on anything, which is why this rule is never used. But, if a defendant were to indicate in their motion for stay that they would stipulate to following this procedure, they would in fact be offering to accelerate the proceeding. In this way, the defendant can take some of the “bite” out of the Patentee’s prejudice (i.e., time delay) argument.In practice very few expedited RANs are sought (I’m not aware of a single one), thus contributing to the prolongation of the inter partes patent reexamination prosecution phase (appeal being a separate phase). If the patent litigation is not stayed and the trial is imminent or underway, the patent owner has little incentive to expedite the inter partes reexamination proceedings. In such circumstances, particularly where the patent owner has not canceled or amended claims for fear of intervening rights applying, expediting the right of appeal where original patent claims are rejected has no benefit. Even where all claims are confirmed or allowed, the patent owner has little incentive to expedite the right of appeal notice to permit the third party requesters to get their appeals heard promptly.On the other hand, where the concurrent patent litigation is stayed pending the outcome of the inter partes reexamination proceeding, the patent owner may want to expedite the right of appeal notice, especially where all claims are confirmed or allowed. In such circumstance, the third party requesters may lack an incentive to seek an expedited right of appeal notice because of fear of the estoppel provisions of 35 U.S.C. § 315(c). Thus, agreeing to fast track the case to appeal is not without risk for either party.Finally, where there are circumstances that may warrant the filing of an expedited right of appeal notice, such as where a parallel litigation is stayed, the USPTO should consider a sua sponte waiver of 37 C.F.R. 1.955. This would permit a joint interview for the purpose of reaching agreement on the issues appropriate for final action and identification of all of the appealable issues. Such would advance the inetrests of the special dispatch requirements of 35 U.S.C. § 314(c). Such a procedure would be in a similiar vein to that of the pilot program seeking waiver of the Patent Owner Statement in ex parte patent reexaminati

Many inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.

So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?
Continue Reading Fast Tracking Inter Partes Patent Reexamination by Agreement

Comparing Claims in Reissue Oath Haunts Patent HolderOn Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 5

On Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.

Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”

The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?
Continue Reading Patent Reissue Oaths Can Impact Claim Interpretation

64ChangingHorsesAs I noted last week, patents exit reexamination everyday. Most such occurrences pass without much notice to the public (aside from typical Business Wire fanfare manufactured by some Patent Owners). Yesterday was different, since the greatest invention EVER exited reexamination…no not the business method patent for the NFL Redzone Channel (probably doesn’t exist, but should), even better, the Tivo time warp patent, U.S. Patent 6,233,389….known to couch potatoes the world over as the “fast forward through commercials patent.”

This is the second go-round for the Tivo Patent in reexamination, now the subject of a very interesting dispute with Echo Star relating to a $300 million dollar judgment.

Although the NIRC is not yet posted to PAIR, it appears that claims 31 and 61 (the only claims subject to reexamination) were confirmed. Looking at the last response, the USPTO must have been convinced that the secondary indicia of non-obviousness for such a household name was persuasive; of course, there were technical distinctions made as well. Also apparent from the last response is that Tivo changed reexamination counsel once they received the final rejection.
Continue Reading Tivo’s Change in Horses Leads to Termination of Patent Reexamination

EndAroundThe greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.”
Continue Reading The ITC End-Around District Court Stays Pending Patent Reexamination

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Updated October 6th (see end of post)

While living dangerously, Star Scientific seems to have somehow avoided disaster. Although the petition decisions have not yet been posted to PAIR, a press release issued yesterday noted that the USPTO had revoked the NIRCs of May 12, 2010. (petitions granted-in-part). A revised press release seems to have issued later noting that the PTO was just “considering” reopening prosecution.

Back in May, we discussed Star’s submission of an interview agenda in place of an interview summary. (See 90/009,372 and 90/009,375). Subsequently, Star tried to convince the USPTO that the proposed agenda (which was submitted prior to the interview) actually was a summary of the the interview itself. On May 17, 2010, Star submitted the agenda again, with an expert declaration explaining that the PTO rules were satisfied by the interview agenda.

While the actual petition decisions are not yet available, it is clear that the PTO is accepting that Star submitted “something” thus avoiding termination (for now anyway), but is requiring Star either explain how the agenda reflects the actual discussion of the interview, or to petition for revival of the proceeding under 37 C.F.R. § 1.137 along with an actual interview summary. In their press release, Star reports the later action as the simple filing of a “routine petition”….which begs the question: Why didn’t Star just do that in the first place?
Continue Reading Star Scientific Avoids Termination of Patent Reexaminations