Scott McKeown

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USPTO Seeks Chief Administrative Patent JudgeAs discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).Former Chief Judge Fleming championed the reform of the appeal process by advocating a rule package designed, arguably anyway, to allow for more focused review. (proposed appeal practice rules). Yet, the proposed changes to appeal practice, like the more infamous rules package of Tafas v. Dudas fame, were not greeted with much enthusiasm by stakeholders.Once again, the winds of change have seemingly swept over USPTO management as the Office is currently in the market for a new, Chief APJ. (apply here)  The next chief will have quite a mandate, especially should patent reform ever become reality (i.e., transformation to Patent Trail & Appeal Boar

As discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.

Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).

Former Chief Judge Fleming …
Continue Reading BPAI Seeks New Chief Judge

Unwary Practitioners Often Inadvertently Surrender Claim Scope in Patent ReexaminationWith so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01But, what difference does it make if the independent claim is amended?The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academ

With so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.

Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.
Continue Reading Card Activation Technologies Tripped Up in Patent Reexamination?

Tax Group Seeks Special Legislation Banning Tax Strategy PatentsAs if the prospects of any meaningful patent reform this year weren’t dim enough, another special interest group has joined the fray. Yesterday, the AICPA sent a letter to Congress (here) urging the enactment of legislation banning tax strategy patents. The letter states that even though consideration

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roadblockass=”alignleft size-full wp-image-3880″ title=”roadblock” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/09/roadblock.jpg” alt=”roadblock” width=”203″ height=”144″ />This past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding. The decision, Ex parte Regents of the University of California (“Regents”) (decision here), affirmed-in-part the rejection of U.S. patent No. 5,916,912 in ex parte reexamination.  In particular, the Board held that Regents could not antedate U.S. Patent No. 5,998,474 (“Cavazza”) because the ‘912 patent and Cavazza were claiming the same patentable invention. Applying, 37 C.F.R. 41.203(a), the Board reasoned that the two patents were directed to “the same patentable invention” since a claim of the Regents patent is obvious in view of a claim of Cavazza, and vice versa. This leaves the Regents in a bind, aside from challenging the BPAI decision to the CAFC, how can an interfering patent applied in patent reexamination be overcome?
Continue Reading What to do with an Interfering Patent in Patent Reexamination?

BPAI Once Again Shoots Down Broadening Reissue

Patent reissue has been a recurring topic here as of late. More recently, the breadth of the recapture doctrine has been discussed. Earlier this year, I discussed ex parte Staats relative to a pending CAFC appeal, and the pending CAFC appeal of ex parte Tanaka.

While the main issue in ex parte Tanaka is whether or not the addition of narrower dependent claims via patent reissue can be said to correct an “error” pursuant to the reissue statute, Tanaka, to a lesser extent, also illustrates the danger of a generically worded reissue declaration. As the BPAI decision of last Friday once again emphasizes, (ex parte Matthew Howard Fronk et al.,) a proper broadening declaration must not only identify at least one error in the issued patent (made without deceptive intent), but must also unequivocally indicate an intention to broaden. More importantly, this unequivocal intent to broaden must be communicated to the USPTO by declaration only, within two years of original patent issuance.
Continue Reading Broadening Patent Reissue Requires Unequivocal Declaration Statement

Giving Up What You Never Had

On September 20, 2010, Judge Ward of the Eastern District of Texas stayed the case of Microlinc LLC., v. Intel Corp et al. 2:07-CV-488. The patent at issue, 6,009,488 was asserted in 2005, but the action was voluntarily dismissed at the request of Microlinc to allow a first reexamination to conclude. Once this reexamination was terminated Microlinc reasserted the ‘488 Patent in 2007 against the same defendants. About the same time, Intel sought a second reexamination of the ‘488 Patent. A final rejection was issued in the second reexamination on May 26, 2010. On July 26, 2010, Microlinc filed a response adding 25 new claims.

Judge Ward stayed the case (decision here). While the case is now stayed, in his decision, Judge Ward offered the plaintiff an option to lift the stay that will necessitate the Patent holder give up, well….nothing.
Continue Reading Illusory Sacrifice in Patent Reexamination to Avoid Stay in Marshall Texas?

New Ex Parte Patent Reexamination Pilot Program a Tough Sell

Back in August, I reported on a new USPTO pilot program designed to decrease pendency in ex parte patent reexamination by seeking waiver of the right to file a Patent Owner Statement.

According to 2009 PTO statistics, Patent Owners filed statements in 10% of ex parte reexaminations. This is because filing of such a statement gives a Third Party a one-time rebuttal opportunity. Otherwise, Third Party participation is precluded by statute in ex parte reexamination. Therefore, by simply waiting for the Office to issue the first action, the Third Party is effectively silenced for the duration of the proceeding.

The new pilot program seeks to avoid the period of time the USPTO must wait to receive a Patent Owner Statement by requesting an early waiver of this right from the Patent Owner. Assuming the Patent Owner cooperates upon receiving notice of the initial request filing, the USPTO can reduce pendency by avoiding this front loaded, down time.

Since the program has been in operation for a few weeks now, it seemed like a good time to review the early results, and caution certain Patent Owners on how this seemingly trivial question of procedure may come back to haunt them. …
Continue Reading Waiver of Patent Owner Statement Disfavored in Ex Parte Patent Reexamination

Proposed Patent Reexamination Pilot Program Touted as Pro-Business

In Monday’s Federal Register, a pilot program entitled Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System was introduced (here). The notice requests comments from the public on a newly proposed enhancement to ex parte patent reexamination that would allow certain Patent Holders to advance to the head of the USPTO line. The Patent Holders qualifying for this enhanced treatment would be those “demonstrating humanitarian practices with patented technologies.”

The notice primarily presents 12 questions proposed to the public, seeking guidance on a test that would properly identify a humanitarian practice stemming from a subject patent. Specifically, comment is sought on weighting and filtering factors that would best define the “humanitarian use” and  “humanitarian research” definitions that would entitle a patent to consideration under the pilot program.

The proposal appears modeled after an FDA program that provides “vouchers” to such patent holders for advancing them to the front of that agencies review line. The PTO proposes a similar system in which the ex parte reexamination of such patents would be completed (excluding periods spent by the Patent Owner to respond) within 6 months.

The USPTO is to be applauded for their efforts to address real world business realities, yet, in this instance, I am left wondering if this proposed program can meet its stated goals.
Continue Reading Jumping to the Head of the Line in Ex Parte Patent Reexamination?

Paperwork

The Fruit of the Poisonous Inequitable Conduct Tree= Mammoth IDS Filings

Last week, I commented on a recent ruling in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H) relating to patent resissue/recapture. In addition to the interesting recapture issues presented, this case also demonstrates why the USPTO must be continually burdened with mammoth IDS filings in post-grant proceedings.

Last week a further ruling was issued in this case on a summary judgment motion. Plaintiff Bendix requested summary judgment of NO inequitable conduct based on a multitude of defendant accusations relating to the plaintiff’s conduct during the patent reissue proceeding. Despite the plaintiff’s disclosure of litigation materials, expert reports etc, as well as the defendant filing their own carefully worded protest in the patent reissue proceeding, the defendant pointed to a single sentence of a deposition as being withheld from the USPTO….I couldn’t make this up.
Continue Reading Large Patent Reissue/Reexamination IDS Filings Driven By Inequitable Conduct Plague

horiz_2stepAs discussed previously, defendants accused of patent infringement that are hauled before a plaintiff friendly  Texas court, not surprisingly, tend to seek transfer to a less favorable venue where possible. Often times, the “favorability” of an alternative venue may be driven in part by the tendencies of the alternative venue to stay a litigation pending patent reexamination. I previously identified this tactic as the “New Texas Two-Step.”

After a few years of dancing around a first plaintiff initiated suit in Texas, followed by a second defendant initiated suit in Virginia (later consolidated to Texas), Juniper Networks was able to successfully execute the Texas Two Step.  On Monday, the Northern District of California (receiving the dispute by transfer from Texas) stayed the dispute between Juniper Networks and Graphon Corp pending the outcome of patent reexamination.
Continue Reading Juniper Network’s Texas Two Step a Success