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New Appeal Rules Effective January 23, 2012

This past Monday the USPTO released the final rule package pertaining to the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. (here).

This final rule notification stems from the earlier notice of proposed rule making issued last November. The rules are limited to ex parte proceedings only and have no bearing on patent interferences, or inter partes patent reexamination. Likewise, the new rules will not control Inter Partes Review or Post Grant Review. The final rules become effective on January 23, 2012. (for appeals initiated on or after the effective date)

In response to the original publication of the rules, I pointed out that the proposal provides an interesting safeguard against new rejections in an Examiner Answer. Namely, the filing of a 1.181 petition challenging such a rejection tolls the period for filing a Reply brief. Thus an Applicant may await decision on the petition before filing the Reply. This provision will be very helpful in patent application prosecution, but may aggravate ex parte reexamination pendency if abused.
Continue Reading USPTO to Implement New Ex Parte Appeal Rules for 2012

Proper Petition Practice Especially Critical in Patent Reexamination

In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)

The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights.…

Continue Reading When to Petition/Appeal at the USPTO?

Shift in BPAI Fact Finding Necessitates New Rejection

Back in February, In re Stepan (or In re Side-steppin if it helps you remember the case) was argued before the CAFC. In a previous post, I explained how this case demonstrated a problem addressed by the 2010 proposed rule package for practice before the BPAI. Namely, the shifting in rejection grounds during appeal relative to that of the originally applied rejection. The newly proposed Rules attempt to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course once prosecution is closed as no new rebuttal evidence may be entered.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer or BPAI decision can be quite prejudicial during patent reexamination. This is because,…

Continue Reading Shift in Grounds of USPTO Reexamination Rejection Examined by CAFC

BPAI Agrees Invalidated Claims are Invalid

In a strange development, the BPAI issued a decision yesterday invalidating claims 1-6 of U.S. Patent 6, 961,737. While the decision itself is straight forward, it is odd in that claims 1, 3, 4 and 6 were previously invalidated by the CAFC.

As discussed this time last year, the ‘737 Patent was one of the patents at issue in In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010). On May 28, 2010, the CAFC determined that all but claims 2 and 5 of the ‘737 Patent were invalid based upon prior art, including a patent identified as the “Bobo Patent.” The decision was noteworthy as footnote 3 explained the final rejection status of the reexamination, lamenting that the appeal may have been mooted altogether had the reexamination been at a more advanced point. At that time I pointed out that had the defendants not delayed their request for some two years that they may have been able to save themselves the cost of the CAFC appeal.

Yesterday, the BPAI essentially agreed with the CAFC, invalidating all claims based on the Bobo Patent, but such was a waste of time and resources. (decision here)

As noted in MPEP 2286, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination.

So why did the BPAI waste the time in issuing this appeal decision?…

Continue Reading Ablaise Patent Invalidated…Again

BPAI Considers Whether a Purchased Publication is Publicly Available

In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March,the degree of public accessibility of such references is key to determining whether or not a given reference qualifies as prior art. In the March decision, public accessibility was not found for a reference limited to confidential distribution among members of a technical group.

Yesterday in Ex ParteePlus Inc, the BPAI considered an appellant’s theory that a proprietary user manual was not publicly accessible since it required a purchase, and included boiler plate language identifying its proprietary nature.…

Continue Reading Proprietary Publications as Prior Art

In re Lund Affirmed Per CuriamLast May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. Lund’s claim 1 is directed to a laptop computer. The first position is the usual clam-shell orientation (open), the second position enabled the user to rotate the screen and collapse it down on the keyboard in a tablet computer fashion. This was done by removing the screen from a slot connector, reversing the screen and re-inserting it to the connector, or by way of a flexible ribbon cable. (see below)The prior art showed reversible screens that could be moved between such positions, but the electrical connections were distinguishable from those shown in Lund’s patent, at least with respect to mechanical positioning. The orientation sought by Lund is shown below as illustrated in Figs 12 and 15 of the patent.During oral argument, the CAFC noted that the positional features argued were already present in dependent claims 2-8 of the Lund Patent. These claims were not subject to patent reexamination. In an awkward moment for the Patentee, Judge Lourie asked the Patentee why he was on appeal since claims 2-8 already captured what was being argued, and that these claims stood uncontested. Judge Lourie also pointed out that claim differentiation would seem to require a broader reading of claim 1. The Patentee did not have any meaningful rebuttal to these inquiries.Ultimately, the CAFC seemed to agree with the Solicitor that although the claimed electrical connecting means was limited to the structure of the specification, in this case the card or ribbon connector, the function recited did not require any specific mechanical orientation to achieve the recited electrical connection function. So, although other aspects of claim 1 required specific mechanical interaction between components, the function of the electrical connecting means required only connectivity. Absent the existence of the dependent claims, perhaps this case would have been a closer ca

Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.

The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.

Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. …

Continue Reading CAFC Affirms Rejection of Means Plus Function Claims in Patent Reexamination

Ronald Katz & Sorenson Research Appeals DecidedFor those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.In Ex Parte Jens Erik Sorenson (4,935,184) yet another expired patent was considered by the BPAI. However, rather than disputing the standard applied to such patents during reexamination, Sorenson disputed the inherency finding of the examiner relative to a key claim term. The Board explained their reversal of the examiner as follows:[C]laim 1 requires that the stabilizing regions provided by the solidified first plastic material must rigidly secure the first common mode part in position in relation to the second complementary mold part.We are of the opinion that the Examiner has not provided a sufficient basis with factual underpinnings to support the position that Moscicki inherently discloses this aspect of claim 1. . . . . [T]hough Moscicki’s first plastic material may impede some movement of the first common mold part in relation to the second complementary mold part, it may not be sufficiently solidified to “rigidly secure” the first common mold part in position in relation to the second complementary mold part. Indeed, the Kazmer Declaration provides evidence that Moscicki’s first plastic material would not “rigidly secure” as required by claim 1.The Sorenson patent expired in February of 2008, thus it would appear to have only 3 years of enforceability remaining (i.e., 6 years beyond expiration). Since any renewed request for patent reexamination is unlikely to reach a final conclusion before that time, it seems that this licensing campaign will contin

For those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.

Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.

Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.
Continue Reading Notorious Troll Patents Reconsidered by USPTO

BPAI Sides with AccushnetAs reported here last January, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293,

…

When Can the Board Change the Target?In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).At issue in Stepan was the right to priority to a parent application under 35 USC  § 120. Further, a declaration submitted under 37 CFR § 1.131 was submitted to antedate certain 102(a) prior art.  Since the child patent disputed in Stepan was a CIP of the parent, the ability to benefit from the filing date of the parent was considered on a claim-by-claim basis. As such, the examiner determined that certain claims of the Stepan patent were not able to benefit from the 120 priority claim. For these claims, a reference to Singh was determined by the examiner to qualify as 102(b) prior art. Based on this statutory bar, no antedating was possible.The Patentee argued that the 120 priority claim was proper (i.e., 112 support in the parent for the claims), and that priority claim transformed the Singh reference to 102(a) art; thus the Patentee reasoned that the antedating declaration was able to remove Singh as prior art. On appeal, the Board found that the Examiner was incorrect as to 120, and that some of the disputed claims were entitled to priority. However, the Board found that the declaration was insufficient for these claims. In essence, the Board affirmed the examiner by changing the basis of the rejection from 102(b) to 102(a). Rather than seek a rehearing of this issue, Stepan took the dispute to the CAFC.The CAFC and the USPTO pointed out to Stepan that although this change of statutory basis would typically constitute a new ground of rejection, Stepan argued both 102(a) and 102(b) issues in their briefing to the BPAI, and before the examiner. The Patentee countered that had the ground been changed earlier, or designated as such in the affirmance, that the declaration evidence could have been corrected.While a rehearing request to the BPAI is not required before seeking appeal to the CAFC, the panel was not impressed with the failure to point out this issue to the Board prior to the CAFC appeal.Perhaps Stepan would have been better off exploring the controversial district court option to introduce new eviden

In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).
Continue Reading When is a BPAI Rejection Truly New?

NTP Oral Arguments Reveal Disatisfaction with BPAIYesterday, the CAFC considered the patent reexamination appeals of NTP Inc. (see yesterday’s background post). In total, the CAFC heard just under 4 hours of oral arguments. The MP3 file can be found here.Throughout the arguments the CAFC made it clear that much of the Board of Patent Appeals & Interference (BPAI) record was inadequate as to claim construction. The court repeatedly expressed concern that the competing claim constructions offered by the two parties were not clearly differentiated on the BPAI record. Throughout the arguments, the court repeatedly emphasized that a remand to the BPAI seemed in order.  In the first hour, NTP contested the BPAI’s claim construction as inconsistent with the lexicographic definitions of the NTP patents. Throughout the first hour, the CAFC made it quite clear that the BPAI record was unclear as to a clear construction of the term “email.” Judge Moore was especially critical, at one point stating that the Board’s explanation as to this term  was “as wrong as wrong can be.” {48-52 min. mark}. Judge Moore noted that the the lack of fact finding in this regard seemed to require a remand. Judge Clevenger noted that the BPAI record “left a lot of openings.” {58 min. mark}In the second hour, the sufficiency of the antedating evidence was debated. The CAFC seemed to question the conception evidence presented by NTP, labeling it “amorphous.” Again Judge Moore emphasized the fact finding of the BPAI, stating “I don’t love the Board’s findings….I think you got that already” {1.36 min. mark}. Here again the antedating fact finding was so intertwined with claim construction that the CAFC seemed to throw up there hands. The Panel asked the solicitor whether it was fair for the CAFC to decide the issues, or whether a remand to the USPTO was better as an expert agency. {1.45 min. mark}In the third hour, the authenticity of a certain prior art document was debated (Telenor). The court asked NTP why they did not simply contact the authors to seek evidence that the document was fraudulent. NTP argued that the PTO needed to prove the authenticity of a one of a kind document. {2.05 min. mark} The court then seemed interested in whether public accessibility of a prior art reference is a question of law or fact. {2.15-18 min. mark} At the close of the third hour a variety of issues were debated. NTP argued that consideration of 35 U.S.C. § 120 priority was inappropriate as a backdoor 112 attack. {2.38 min. mark} Next, NTP argued that the same issue was considered in the original prosecution, and noted that if this practice is accepted it will open the floodgates to similar challenges in patent reexamination. The court didn’t seem overly receptive to the public policy argument. At the outset of the 4th hr, the CAFC asked NTP to identify those rejections that would not hinge on claim construction, and would not have to be remanded to the USPTO. The Court requested NTP & the USPTO file a list of issues that could be be decided independent of the remand on the claim construction of “email” within 10 days {3.02 min. mark}.What does this mean for NTP?The CAFC seems inclined to affirm certain rejections that do not turn on the definition of “email,” and decide the authenticity of the Telenor reference. It seems clear that the bulk of the issues will be remanded back to the BPAI. Long story short, this battle will continue for another 12-18 months…..at least.  Sorry BPAI, it’s coming ba

Yesterday, the CAFC considered the patent reexamination appeals of NTP Inc. (see yesterday’s background post). In total, the CAFC heard just under 4 hours of oral arguments. The MP3 file can be found here.

Throughout the arguments the CAFC made it clear that much of the Board of Patent Appeals & Interference (BPAI) record was inadequate as to claim construction. The court repeatedly expressed concern that the competing claim constructions offered by the two parties were not clearly differentiated on the BPAI record. Throughout the arguments, the court repeatedly emphasized that a remand to the BPAI seemed in order.  …
Continue Reading NTP Patent Reexaminations to be Remanded to BPAI?