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expiredOn March 15, 2010, an expanded BPAI panel that included Chief APJ, Michael Fleming and Vice Chief APJ, Allen MacDonald rendered a decision on rehearing of an expired patent of the infamous Ronald A. Katz Technology Licensing L.P portfolio. The rehearing addressed the standard for claim construction in expired U.S. Patent No. 5,561,707. A copy of the decision is found (here).

The original BPAI decision contained a statement that, in construing the claims of an expired patent during a reexamination proceeding, “the claims will not be narrowed by interpretation not required by the claim language.”  The expanded BPAI panel clarified the statement made in the original panel decision by stating that “[i]t does not say that the claim terms cannot be interpreted using different words or limit the sources of claim meaning.”

The expanded panel agreed that
Continue Reading Expanded BPAI Panel Rehears Reexamination Decision on Expired Katz Patent

deniedass=”alignleft size-thumbnail wp-image-1402″ title=”denied” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/denied-150×150.jpg” alt=”denied” width=”85″ height=”88″ />As first reported by PatentsPostGrant.com in November 2009, the patent reexaminations of NTP vs. RIM infamy were soundly shot down by the BPAI.[1]  In November of 2009, the BPAI began issuing a series of decisions affirming the rejections of the five NTP patents. 

5,436,960 BPAI…

In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.  Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.  This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.

On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that
Continue Reading E.D. VA. Declines Sigram Schindler’s Bid to Revisit Options for Review of BPAI Decisions in Ex Parte Reexamination

On October 30, 2009, in Ex parte Senju Metal Industry Co. the Board of Patent Appeals and Interferences (“BPAI”) affirmed a rejection of non-original patent claims in a reexamination proceeding directed to soldering flux for soldering elements. As a predicate to its decision, the BPAI explained the rationale behind application of the broadest reasonable interpretation…

Where does a Patent Owner go for judicial review after losing an ex parte reexamination appeal at the Board of Patent Appeals and Interferences (BPAI)? Prior to 2001, Patent Owners had a clear choice of filing suit against the USPTO in the U.S. District Court for the District of Columbia, or appealing adverse BPAI decisions to the Court of Appeals for the Federal Circuit (CAFC). In 2001, amendments to the patent statutes ( 35 U.S.C. §§ 141 and 145 ) in the American Inventor Protection Act (AIPA) appeared to eliminate the District Court option, providing only for appeal to the CAFC. However, a recent case filed in the Eastern District of Virginia questions the USPTO’s interpretation of the statutory changes set forth in MPEP § 2279. In Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.) the patent owner (Sigram Schindler) seeks a right to a trial de novo under 35 U.S.C. § 145 after an adverse decision of the BPAI in an ex parte reexamination (requested by Cisco Systems Inc.) of Sigram Schindler’s 2005 patent for a
Continue Reading Options for Judicial Review of Ex Parte Reexamination Decisions