Scott McKeown

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Gun-BackfireHisamitsu Pharmaceutical requested ex parte reexamination of only claims 1, 3 and 6 of its own U.S. Patent No. 7,034,083 (the “’083 Patent”) based upon certain prior art.  However, the USPTO ordered reexamination on all claims (i.e., claims 1-6) of the ‘083 Patent.

Generally, if a requester chooses not to request reexamination for a claim, that claim will typically not be reexamined. Yet, the decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office. See MPEP 2240; Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

During reexamination of the ‘083 Patent the Patentee placed the features of claim 2 into claim 1. In response to the amendment, the examiner again rejected claims 1 and 3-6 over a reference cited in the original prosecution. On appeal, the BPAI in Ex parte Yasukochi et al. affirmed the examiner’s rejection of claims 1, and 3-6.

In its decision, the BPAI refused to consider the appellant’s argument that the rejection of the claims over old art was improper, because it did not raise a substantial new question of patentability (SNQ), holding that the question of whether an SNQ exists is a petitionable issue and not an appealable issue.

In order to properly contest the new rejection, the patent owner should have
Continue Reading Owner Initiated Patent Reexamination Backfires in Ex parte Yasukochi et al.

ar123551342397313When evaluating a request to stay litigation pending reexamination, district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set.

In an recent opinion, U.S. Magistrate Judge Janie S. Mayeron denied defendants’ motion to stay litigation pending ex parte reexamination because, among other reasons, the reexamination proceedings could not streamline the case. J. Blazek SKLO Podebrady s.r.o. v. Burton Int’l Enterprises, Case no. 08-cv-2354 (D. Minn. June 11, 2010).  At first blush, Judge Mayeron’s rationale for denying the stay seemed illogical as it is certainly the case that, cancellation or amendment of the claims in the patents under reexamination could moot issues of validity, enforceability, infringement, and even damages.

Upon closer inspection, however, this case presents an unusual set of facts in that the
Continue Reading Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense

whisper1

In our February series on the use of reexamination evidence in concurrent litigation, specifically “Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV),” we observed that some courts are, at best, ambivalent about the presentation of evidence pertaining to a related patent reexamination for rebutting a charge of willful infringement. Those courts typically express concern that juries may become prejudiced or confused if they learn that the same agency that originally issued the patent — the PTO — has declared that a substantial new question patentability exists or has rejected the patent’s claims.

Notwithstanding those potential problems, a jury in the Eastern District of Texas may soon hear that three claims of the patent-in-suit currently stand rejected in reexamination proceedings.
Continue Reading Jury to Hear Evidence of Patent Reexamination Proceedings

mouse-5 The Harvard “oncomouse” in case you have never heard of it, is a strange little laboratory rodent genetically modified at Harvard (transgenic) to carry human genes.  One of the more infamous uses of this technology is to grow human ears on mice. As no surprise this bit of genetic engineering was patented back in the 80’s and early 90’s (5,925,803 as well as other related patents) setting off quite a debate as to the metes and bounds of patentable subject matter, not only in the U.S., but around the globe. More recently, the ‘803 Patent has been subject to a request for ex parte reexamination. Of particular interest in this request for reexamination is the assertion by the Third Party that the patent is expired. Of course, anyone familiar with patent reexamination realizes that an expired patent may be subject to reexamination if it is still enforceable (i.e., within a 6 year window of expiration). The real surprise here is that the Third Party argued that the ‘803 Patent expired based on an overly broad terminal disclaimer of a parent application. In the filing, the Third Party requested comment from the USPTO on their terminal disclaimer theory; the USPTO surprisingly obliged. In doing so, the USPTO not only ended the reexamination before it started, but may have invited a lawsuit on the Office best fought by industry. 
Continue Reading The Harvard Oncomouse Patent Reexamination, Over Before it Started?

ford

In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI,  (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.

Figure 1 – Trailer Life Magazine’s Spy Photograph

In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist,
Continue Reading Paparazzi Photo Kills Ford Design in Patent Reexamination

connectRecently, we discussed the use of declaration evidence to advance prosecution in patent reexamination, and selecting declarants where concurrent litigation exists together with patent reexamination. In this post we explore a type of declaration commonly encountered in patent reexamination, declarations that attempt to identify objective evidence of non-obviousness.

MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As amendment of claims is not practical in many instances during patent reexamination (i.e., intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. Yet, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively connect this evidence to the claims. Deficient submissions typically fall into two main categories:Continue Reading Connecting Secondary Indicia of Non-obviousness to Claims Undergoing Patent Reexamination

k1610558In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages.  This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to infringers. This past week, such a reexamination misstep was analyzed
Continue Reading Sometimes Confirmed Claims in Patent Reexamination Equal Defeat

ag_logo With Memorial Day now behind us, so much for the vote on S.515 before the holiday. Since Congressman Conyers floated the separate USPTO funding bill there does not appear to be much movement on the substantive issues of S.515.

Still, there will be a discussion of the policies at play in these legislative proposals next week (6/15) in DC (Georgetown).  The Program is described as:

Hear the perspectives of leading experts on the need for reform and the current legislative landscape, the pros and cons of bills under consideration, and the future implications for research, licensing, and litigation:

kicked outIn last week’s discussion on the topic of declaration usage in patent reexamination, we explained the benefit of such evidence in close cases, illustrated by both the dissent and majority comments on the limited evidence of record in ex parte Rehrig Pacific Company

Several days after the Rehrig Pacific decision, the BPAI once again emphasized the importance of such evidence.  On May 28, 2010, in inter partes reexamination 95/000,008 (Shimano v. Rolf Dietrich BPAI 2010-001847), the Board analyzed the issue of written support relative to newly claimed static tension ranges of a bicycle rim. With regard to the new limitation, explicit support did not exist in the specification, but the Patentee argued that one of skill in the art would nevertheless recognize such disclosure as provided in the specification.  In rejecting this argument
Continue Reading Lack of Evidence in Patent Reexamination