As detailed in our May 18, 2010 posting, non-compliant requests for patent reexamination have been increasing at the USPTO. As the Office is now more closely scrutinizing the substance and procedural aspects of requests for patent reexamination, a checklist and FAQ were recently provided by the Office to aid practitioners in preparing compliant requests. The
In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).
The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:
An ultimately final rejection of the claims by the PTO, would fatally undermine
Continue Reading The Risk of Delaying Your Request For Patent Reexamination
Last Friday two decisions of the Federal Circuit touched upon patent reexamination practices. In this post we will examine the first decision, Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc./Shanghai Meihao Electric Inc. v. Leviton Manufacturing Company, Inc. In this decision, the question of whether or not inequitable conduct may be cured in a subsequent, post-grant proceeding of the USPTO was considered. The question before the CAFC in Levitton was whether or not a summary judgment finding of inequitable conduct in the district court should stand. Perhaps, being overly cautious in view of the pending en banc review in Theresense, Inc. v. Becton Dickinson and Co., and indicating that summary judgment of inequitable conduct is the rare case, the court reversed the lower court. Confusingly however, the majority indicated that conduct during patent reexamination may be indicative of a “good faith” intent.
Continue Reading Can Inequitable Conduct be Cured Via Patent Reexamination?
As pointed out in our post on shielding declarants from litigation discovery in patent reexamination, the submission of declaration evidence is quite commonplace in patent reexamination as compared to application prosecution. Last week the Board of Patent Appeals & Interferences (BPAI) issued two decisions affirming rejections of patents under reexamination in which declaration evidence, or the lack thereof was outcome determinative. In this post we will discuss the first case, ex parte Rehrig Pacific Company
In ex parte Rehrig Pacific Company, had declaration evidence been submitted, the outcome may have been very different.
In this appeal, the final rejection in ex parte patent reexamination 90/006,283 of claims 25-35 and 53-56 was considered by the BPAI. A key consideration in applying the art to the claims was whether or not the claim term “top frame” or “top frame assembly” was different from the pallet structure of the prior art (from the perspective of one of ordinary skill in the art). No declaration evidence from one of skilled in the art was presented on this key issue.
Continue Reading Close Calls: Declaration Practice in Patent Reexamination
Rejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim AnalysisOn May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The ‘802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.
The BPAI affirmed the rejection of method claims 12-15 of the ‘802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed…kinda
Continue Reading Failure to Identify Specification Structure a Non-Starter for BPAI
In 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
Previously, we explored what types of amendments to claims under post-grant review can trigger intervening rights.
As you may recall, claim amendments in current post grant proceedings at the USPTO (i.e., reexamination/reissue) create intervening rights. 35 U.S.C. 307 (ex parte) and 35 U.S.C. 316 (inter partes) describe the impact of amending claims in patent reexamination, incorporating 35 USC 252 (relating to intervening rights in reissue applications). In essence, the doctrine of intervening rights forecloses the recovery of past damages for patent infringement if a claim is amended after issuance of the patent.
The case of Kim v. The Earthgrains Co., k/n/a Sara Lee Bakery Group Inc., 01-cv-3895 (N.D. Ill.), presented the issue of whether a change in the transitional phrase (i.e., legally operative terms) of a patent claim could trigger intervening rights.
Continue Reading Change in Transitional Phrase Can Trigger Intervening Rights
As a review for new readers, some IPR basics.
Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent. Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents. Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added. There are two types of reexamination proceedings: ex parte and inter partes. An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action. The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse
Continue Reading The Benefits of Inter Partes Patent Reexamination
Unlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.
A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed.
Continue Reading Shielding an Expert Declarant in Patent Reexamination from Deposition in Concurrent Litigation?
As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to systems and methods for managing dynamic websites.
Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.
The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”). Both cases are now on appeal to the BPAI. The case is rather unremarkable
Continue Reading Microsoft Just can’t Catch a Break in Patent Reexamination