Scott McKeown

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yourenothelpingIf you are one of the foolish people out there under the impression that the U.S. banking and real estate crash has led to the current economic state, heightened unemployment, etc, you would be wrong. Turns out, the 18 month publication of patent applications, and 35 USC  § 102(e) have ruined the U.S economy….who knew?

On July 29, 2010 H.R. 5980 was introduced by Congressman Frank Wolf (R-VA) as the “Bring Jobs Back to America: Strategic Manufacturing & Job Repatriation Act.” How can anyone vote against that noble cause!?

Unfortunately, once past the flowery title, the substance of the bill, at least with respect to the proposed patent law changes is simply a collection of oddball provisions that would neither achieve any meaningful reform nor job repatriation.
Continue Reading HR 5980 Distracts From Patent Reform Efforts

Did the Patent Holder Miss the Boat on Claim Interpretation?On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.At issue in the appeal was a single independent claim, claim 1 below (as amended): 1. (As Amended) A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising:a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, andtime delay means for automatically extinguishing said light source after a fixed time delay following the energization of said light source by the electrical deenergization of said light source.  The Office identified the time delay means as being satisfied by the Mallory reference (Fig. 1 below)PPG Comment: Rather than arguing that the “time delay means” of the claim was required to be interpreted under 35 USC § 112 6th paragraph (i.e., means plus function) and that the circuit structure of the specification was nowhere near an equivalent structure to the mechanical spring/bellows arrangement of Mallory, the Patent Holder instead argued the reference was non-analogous art, and could not be bodily incorporated into a watch. Giving the Patent Holder the benefit of the doubt, perhaps the aversion to 112 6th was litigation inspired. For example, the solenoid/capacitive based circuitry of the patent specification, although described as exemplary, could limit infringement options.While the BPAI cannot be blamed for not making the Patent Holder’ s argument for him, I am left wondering whether a statutorily mandated claim construction can be ignored regardless of the implied “waiver” of such arguments in the brief? As pointed out repeatedly on this blog, the USPTO could save Patent Holders a lot of grief, and conserve Office resources by requiring third party requesters to properly address means-plus-function claims, upfront, in their requests for reexamination.[1] Patent Owner sued Casio Computer in 1998 on this patent Rhine v. Casio Inc., Inc., No. 3:96CV7524 (N.D. Ohio May 12, 1998). After a remand from the CAFC, the case was dismissed in 2005 without prejudice in light of the reexaminati

On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.

In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.

While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.

Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.
Continue Reading 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination

blindersOn August 20, 2010, a motion to stay the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc. (0-09-cv-01594) (NDM) pending the outcome of a parallel patent reexamination was denied. At issue in the litigation are three of 3M’s patents relating to RFID technology, namely 6,232,870, 6,486,780 and 6,857,568. Envisionware requested inter partes reexamination of the ‘780 and ‘568 Patents. Curiously, since the third patent, the ‘870 Patent does not qualify for inter partes reexamination, reexamination of this patent was not sought at all. A non-final office action rejecting  the ’568 Patent claims was issued by the USPTO, the ‘780 Reexamination has yet to begin. On August 2, 2010, Envisionware filed the motion to stay the litigation.

The court denied the motion to stay the litigation citing familiar factors, noting that (1) the stay would prejudice the plaintiff, (2) the stay would not likely simplify the issues in litigation and facilitate trial, and (3) discovery will soon be complete. Yet, clearly, of more interest to the court was why Envisionware chose to ignore the ‘870 Patent altogether.
Continue Reading Rubbing the Court the Wrong Way in Seeking a Stay Pending Patent Reexamination

Can an Ongoing Patent Reexamination be Stopped?With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel.35 USC § 317 (b) provides:(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings. (emphasis added)It is important to note that the estoppel provisions of inter partes patent reexamination do not apply to ITC proceedings, see our earlier discussion of this issue.With respect to district court proceedings, where parties agree to settle, and the defendant is also willing to accede to a consent judgment stating that they have failed to prove invalidity, such may serve as a final judgment. (once the 30 day time to appeal the consent order has passed). In considering the language of the consent order, the USPTO will look to whether or not the claims of the ongoing inter partes reexamination are the same as that at issue in the litigation. For claims of the ongoing reexamination that are not subject to the consent judgment, the reexamination would continue as estoppel would not attach for these claims. (likewise for any newly added claims) Attached is a 2009 petition decision detailing a vacatur of an inter partes patent reexamination. (here)In practice, defendants rarely agree to such a consent order since such a public humliation is not all desirable. (e.g., especially if the defendant is frequently the target of patent trolls). Likewise, as noted in the petition decision linked above, although the reexamination is vacated by the estoppel as to the particular setttling defendant, the unfinished business of the reexamination may be easily “re-started” by another competitor. Still, in settling patent disputes concurrent with inter partes patent reexamination, plaintiffs may be amenable to such a consent judgement ….for the right pri

With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”

In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.

In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel.
Continue Reading Turning Off an Inter Partes Patent Reexamination

Estoppel of 35 USC § 317(b) Applies Only to Inter Partes Patent ReexaminationOne of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to “gold plate” a patent that is later asserted against the requester in district court, especially with respect to the same or similar art. This notion was tested recently in Crestron Electronics Inc. v. RGB Systems Inc., CV 09-8402 (CDCA).Crestron’s U.S. Design Patent D569,863 is asserted against RGB in the California District Court. RGB had earlier sought ex parte reexamination of the same patent based upon the same prior art now applied in the district court proceeding. Not surprisingly, Crestron noted that the reexamination attempt based on the same art now before the district court had failed to invalidate the patent. In other words, without any presumption of validity, and the ability to invalidate the patent by a mere preponderance of the evidence, RGB failed. Thus, Crestron argued that the reexamination results should preclude an invalidity defense on the same art. The court decided that not only can RGB argue the same invalidity positions over again, but that the court need not even show deference to the reexamination results.More specifically, the court sided with RGB’s argument that:…a district court must make its own validity determination and may not rubberstamp the PTO’s reexamination decision. E.g. Quad Environmental Tech. Corp. v. Union Sanitary Dist., 946 F.2d 870, 876 (Fed. Cir. 1991) (“The courts are the final arbiter of patent validity and, although courts may take cognizance of, and benefit from, the proceedings before the patent examiner, the question is ultimately for the courts to decide, without deference to the rulings of the patent examiner.”).PPG Comment: Part of the problem with reading Quad Environmental so extensively is that the facts are quite distinguishable. While Quad also dealt with the issue of an earlier concluded reexamination on some of the same art, the key invalidity issue before the Quad Court related to public use evidence not considered in the concluded reexamination. Thus, it is quite clear why the Quad Court concluded that the earlier reexamination was not to be accorded deference, and why the Court must do their own validity analysis in most cases. However, here where the art and issues are identical, and RGB failed to prove invalidity under much more liberal USPTO standards, some deference seems appropriate. To be sure, courts often cite to the potential results of patent reexamination to justify staying a case, yet when given the opportunity to actually conserve judicial resources based on such results………Of course, inter partes reexamination remedies this dilemma by operation of statutory estoppel (317 (b

One of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to “gold plate” a patent that is later asserted against the requester in district court, especially with respect to the same or similar art. This notion was tested recently in Crestron Electronics Inc. v. RGB Systems Inc., CV 09-8402 (CDCA).

Crestron’s U.S. Design Patent D569,863 is asserted against RGB in the California District Court. RGB had earlier sought ex parte reexamination of the same patent based upon the same prior art now applied in the district court proceeding. Not surprisingly, Crestron noted that the reexamination attempt based on the same art now before the district court had failed to invalidate the patent. In other words, without any presumption of validity, and the ability to invalidate the patent by a mere preponderance of the evidence, RGB failed. Thus, Crestron argued that the reexamination results should preclude an invalidity defense on the same art. The court decided that not only can RGB argue the same invalidity positions over again, but that the court need not even show deference to the reexamination results.
Continue Reading Concluded Ex Parte Reexamination Results Ignored by District Court?

Silence in Original Prosecution History Used Against Patent OwnerAs discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.Yet another interesting BPAI case that appears destined for the CA

As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.

Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)…
Continue Reading Estoppel by Inaction, BPAI Forecloses Argument in Patent Reexamination

USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner…

Every year is getting shorter never seem to find the time.Plans that either come to naught or half a page of scribbled lines……An interesting note appeared on one of the forums of Politico.com yesterday.POLITICAL INTEL: PATENT BILL READY FOR PRIME TIME – Aides on the Senate Judiciary Committee say they are confident their bipartisan patent

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Monsanto Co. v. Geerston Seed Farms

In the recent Supreme Court case of Monsanto Co. v. Geertson Seed Farms, the Court shed some additional light on how district courts should assess the factors required to determine whether to impose an injunction.  The Monsanto decision did not concern patents, however it raises some interesting issues that would apply to injunctions in the patent context, particularly when a patent is found to be infringed in a district court litigation, but is also under concurrent reexamination.  See our earlier discussion of the use of patent reexamination to defeat an injunction for more information on this issue. 

Specifically, the Monsanto decision noted that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course.  If a less drastic remedy … was sufficient to redress respondents’ injury, no recourse to the additional and extraordinary relief of an injunction was warranted.”  Monsanto Co. v. Geertson Seed Farms, 130 S. Ct. 2743, 177 L. Ed. 2d 461, 481 (June 21, 2010).

In Monsanto, applying the traditional four-factor test for injunctions, the Supreme Court found that the District Court had abused its discretion in enjoining a federal administrative agency from deregulating a species of plant pending the completion of an environmental impact statement.  Id. at 481.  The Court felt that simply vacating the federal administrative entity’s decision could redress Respondents’ injury, thus it was unnecessary to resort to the “additional and extraordinary relief of an injunction.”  Id.

The potential effect of Monsanto on patent litigation involving concurrent reexamination was not lost on patent practitioners.  Just a few short weeks after the decision in Monsanto, in an amicus brief to the Federal Circuit, Verizon Communications, called attention to Monsanto’s aversion to injunctions.  Br. for Verizon Commc’n at 4, Tivo, Inc. v. Echostar Corp., No. 2009-1374 (Fed. Cir. July 2, 2010).
Continue Reading The Equities of an Injunction Concurrent with Patent Reexamination