Scott McKeown

Subscribe to Scott McKeown's Posts
Contact:Read more about Scott McKeown

good-enough3Last Friday, the BPAI issued a decision reversing all rejections in the ex parte reexamination appeal of U.S. Patent 6,513,042. The patent is owned by Test.com and is directed to methods of on-line testing of students (test-takers). The patent was challenged back in April 5, 2006 by the Electronic Frontier Foundation.

The primary issue in this appeal was whether or not antedating declarations (swear behind) required all inventor signatures, or whether or not the declarations can be executed by a representative of the Patent Owner alone. The examiner pointed to aspects of MPEP 715.04 that seemed to imply that all inventors must sign
Continue Reading Test.Com Reexamination Concludes with BPAI Reversal

APTOPIX Obama 2008During an interview with ABC news this past Sunday, “This Week” Senior White House Advisor David Axelrod fielded questions on the administration’s plan for economic growth. With the deficit growing, and the Obama White House being assailed for over spending, Mr. Axelrod mentioned several initiatives that will not require further spending, but are expected to…

080526155300-largeass=”alignleft” src=”http://www.bioresearchnews.com/wp-content/uploads/2009/09/080526155300-large-300×225.jpg” alt=”080526155300-large” width=”213″ height=”185″ />The USPTO has recently upheld Genetic Technologies Ltd.’s (GTG’s) patent for non-coding DNA technologies.  U.S. Patent No. 5,612,179 titled “Intron sequence analysis method for detection of adjacent locus alleles as haplotypes” claims a method for facilitating the detection of specific gene variations.

The third party initiated ex parte re-examination Control No. 90/010,318, was filed on October, 15, 2008 requesting that each of claims 26-32 be found invalid in view of a new reference, which was not previously cited in the prosecution of the ‘179 patent; namely a printed publication titled “Comparison of Multiple HLA-A Alleles at the DNA Level by Using Southern Blotting and HLAA-A-Specific Probes” by Beverly Koller et al. (“Koller I”).  The request submitted that Koller I raised a substantial new question of patentability and renders claims 26-30 and 32 of the ‘179 patent invalid as anticipated under § 102(b) and claim 31 invalid under § 103(a).  The request further argued that Koller I discloses characterizing the alleles of the multi-allelic HLA-A genetic locus using polymorphisms found in non-coding regions of that locus, including polymorphisms in introns and polymorphisms in flanking regions of the HLA-A locus.

In a reply filed July 24, 2009, GTG argued
Continue Reading Genetic Technologies Ltd.’s Non-coding DNA Patent Upheld on Reexamination

Smoke-N-Mirrors_whiteThe Death Rattle of a Troll

As we detailed previously, the NTP patent portfolio has been eviscerated in patent reexamination with over 2200 claims rejected across 8 patents.  All 8 patents are now on appeal to the CAFC, based on my reading of the rejections, it appears unlikely that NTP will be successful in reversing the applied rejections. Much of NTP’s arguments deal with the proper interpretation of claims in patent reexamination, NTP argues that the district court Markman is controlling rather than a broadest reasonable interpretation used by the USPTO. Of course, this argument has been rejected by the CAFC consistently over the years. In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007); and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007). Another substantial component of their arguments is that a certain printed publication (Telenor) was falsified, and does not in fact qualify as prior art; to date this argument has fallen on deaf ears.

As a result of the reexaminations, initiated by both the Director of the USPTO and Research in Motion (RIM), only 36 original claims were confirmed. A single one of these claims, claim 15 of the 960 patent, was held not invalid and infringed by the CAFC in the earlier RIM dispute (method claims 32 and 34 while found infringed at trial were overturned at the CAFC under 35 USC 271 (f)). So, one would expect that with roughly 2% of the earlier claim set still intact, and the entire portfolio set to expire in 2012, that NTP would quietly fade away. Yet, NTP has initiated yet another suit (complaint against Apple here) just last Thursday, perhaps in the hopes of securing further settlements prior to the final CAFC decisions. In doing so, NTP has filed a complaint referencing patents that may be canceled by the CAFC in a matter of months, and has referenced claims added in patent reexamination that do not yet exist as an enforceable property right.
Continue Reading NTP’s Last Stand: The Remnants of Patent Reexamination

80px-Baseball_umpire_2004ass=”alignleft size-full wp-image-3003″ title=”80px-Baseball_umpire_2004″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/07/80px-Baseball_umpire_2004.jpg” alt=”80px-Baseball_umpire_2004″ width=”80″ height=”120″ />In the world of pharmaceuticals, every day counts.  Indeed, when the subject matter is a block-buster drug like Bristol-Myers/Sanofi’s anti-blood clot drug Plavix® every day of U.S. sales averages nearly $15.5 million dollars (reported U.S. sales for 2009 of $5.6 billion).  So, it comes as no surprise that Apotex Inc., a Canadian manufacturer of a generic version of the drug, refuses to sit on the side-lines waiting for the Plavix® patent (U.S. 4,847,265) to expire.  However, the playing field has not been so kind to Apotex.
Continue Reading Three Strikes, You’re Out!? Apotex’s Latest Attempt to Invalidate the PLAVIX® Patent Denied by USPTO

chanceIn patent application prosecution, patent owners may  file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37 CFR 1.114.  However, these mechanisms are not available in patent reexamination. There may be occasions when additional prosecution may be beneficial in reexamination.  For example, in certain situations special dispatch may be served by the submission of new evidence, prior art,  or amendments. So, is a final action the end of the line?
Continue Reading Petitions Requesting Continued Reexamination (RCR)

quietLast week, the Delaware District Court stayed the litigation proceedings in  Enhanced Security Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No. 09-571-JJF, (June 25, 2010) at the defendant’s request in view of two ongoing patent reexaminations. As the  Delaware court statistically seems more receptive to stays than say, the Eastern District of Texas Court in Marshall Texas, this development is not at all surprising. 

Of more interest to me, is a recent petition decision (April 15, 2010) in the inter partes reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).

In responding to the first action, the Patentee filed a reply over the 50 page limit identified in ( 37 CFR 1.943). Recognizing this problem, the patentee, at the time of filing the reply, simultaneously petitioned for waiver of the page limit under 37 CFR § 1.183. In response, the Third Party filed an opposition petition under 37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition under 37 CFR § 1.183 to waive the rules to allow for consideration of their § 1.182 petition.

In deciding the patent owner’s petition, the Office of Patent Legal Administration (OPLA) granted the Patentee a waiver of the 50 page limit. Curiously, however, OPLA expunged the third party opposition petitions from the record and took the position that third parties have no right to oppose procedural filings of patent owners in inter partes reexamination proceedings. OPLA reasoned that the inter partes patent reexamination statutes only permit a single response to substantive issues of patentability. While I don’t necessarily disagree with OPLA’s action, I find the reasoning to be curious, as I have never seen an inter partes patent reexamination in which third party opposition petitions were not filed.  In fact, the USPTO’s Electronic File System (EFS) has a selectable document code and corresponding description “Reexamination– Opposition filed in response to petition.” ……….What Gives?
Continue Reading Are Third Party Opposition Petitions Permitted in Inter Partes Patent Reexamination or Not?

USA-COURT/SOTOMAYORWith patent reform seemingly on the back burner yet again, Senator Leahy stands on the In re Bilski soap box to rally supporters Monday, noting:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected.  The Court’s opinion…

DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS?It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:1.     According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and2.    Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111Using  this framework, the application of prosecution history in patent reexamination has been highly inconsistent.Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. ” MPEP 2111.01 (indeed, the appeal record of  95/000/017 extensively analyzed prosecution history in accordance with Phillips).Confusingly, other Board cases that analyze the “reasonableness” of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).I expect either the Board or CAFC to clarify this issue down the road, the sooner the bett

It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.

By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.

It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”…
Continue Reading Inconsistent Claim Interpretation Practices in Patent Reexamination

designCanvasNewSheriff

Last Friday we explained the case of Ex parte Yasukochi et al, in which the Patentee argued that a rejection applied in reexamination was considered during original prosecution, and thus, could not constitute an SNQ. (The rejection at issue did not appear in the original request for reexamination but was newly applied by the Examiner during the reexamination). On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure that must be addressed by petition. The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination.

Under the BPAI’s recent reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition would now be untimely (since more than two months have elapsed since the rejection was made).

Upon second thought, the USPTO has determined that issues
Continue Reading BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination