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Notorious Portfolio Stands Gutted by USPTOToday at 2PM, the CAFC will hear oral arguments in the patent reexamination appeals of NTP Inc. (Wall Street Journal article here). After years of prosecution and appeals through the PTO system, the NTP patent reexaminations of NTP v. RIM fame finally get their day in federal court.As discussed last year, the USPTO rejected all but one of the previously adjudicated NTP claims. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected by the USPTO. These rejections were later affirmed by the Board of Patent Appeals & Interferences (BPAI).  Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).As to the newly added claims, thesewill not be enforceable until printed by the USPTO. Even then damages will only be available from the time of printing, until expiration, in 2012. As printing is still months away these claims seem to be of marginal strategic value.The CAFC has set aside an entire afternoon to hear these appeals en masse. It seem unlikely that the rejections will be reversed as NTP has relied on some fairly “controversial” theories to put it diplomatically. To date NTP has argued that a certain Telenor art reference was fabricated by the requester, and that Markman decisions are binding on the USPTO.For those interested in hearing the oral arguments, audio recordings should be posted on the CAFC website some time Frid

Today at 2PM, the CAFC will hear oral arguments in the patent reexamination appeals of NTP Inc. (Wall Street Journal article here). After years of prosecution and appeals through the PTO system, the NTP patent reexaminations of NTP v. RIM fame finally get their day in federal court.

As discussed last year, the USPTO rejected all but one of the previously adjudicated NTP claims. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected by the USPTO. These rejections were later affirmed by the Board of Patent Appeals & Interferences (BPAI).  Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

As to the newly added claims, these…
Continue Reading NTP Patent Reexamination Appeals Heard Today At CAFC

First CAFC Review of Inter Partes Patent ReexaminationIn inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. (previous discussion here) The BPAI determined that the prior art reference of record did not show a data card containing any type of aperture, but secondary references did.  Nevertheless, the BPAI determiend that it would not be obvious to modify the primary references to include one of the circular apertures of the secondary references.  The Board explained that obviousness of a design patent requires an analysis of whether the design would have been obvious to a designer of ordinary skill who designs articles of the type involved and that there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.  Vanguard then took the fight on to the CAFC in Vanguard Identification Systems Inc. v. David J. Kappos et al.Unfortunately for Vanguard, the reversal of the BPAI was affirmed without comment (Rule 36, here). Clearly, that not all inter partes patent reexaminations end in defeat for Patentees. Interestingly, this is the first inter partes patent reexamination to make it through the full process (i.e., from initial filing to CAFC appeal) some 11 years after enactment of the inter partes patent reexamination statutes. Also interesting in that the USPTO was supporting the patentability determination here, as opposed to their usual ro

In inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. (previous discussion here) 

The BPAI determined that the prior art reference of record did not show a data card containing any type of aperture, but secondary references did.  Nevertheless, the BPAI determiend that it would not be obvious to modify the primary references to include one of the circular apertures of the secondary references.  …
Continue Reading Hole in Patent Reexamination Strategy Leads to CAFC Defeat

Golf Ball Brawl Heard at BPAIYesterday, 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, 6,503,156, 6,506,130, 6,595,873)In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.So, yesterday, the Board learned all about Acushnet, a company known for their balls.The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. It was also argued that since a Markman Order on the meaning of the claim terms had been considered by the BPAI that this claim interpretation should be controlling on the USPTO. Callaway also referenced secondary indicia of non-obviousness that pointed to the sales success of the ProV1 golf balls.Callaway emphasized to the Board that the claims reciting a polyurethane embodiment were of primary importance. When prompted by the Board as to whether or not Callaway was intending to waive the claims not including this feature, Callaway agreed to waive those claims on the spot. I am guessing the Board probably would have preferred that happen before reading all of the briefs and associated examiner positions.  Strange.In rebuttal, Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims. Acushnet then explained that they (Titleist) sell more balls than anyone else because they are the market leader and that the Callaway evidence of secondary considerations had no meaningful nexus to the patented claims.The dispute will inevitably head on to the CAFC no matter the decision of the Board. If the claims ultimately fall at the CAFC (my guess), I will be very interested in the outcome of the breach of contract issue. Can Acushent really breach the contract in view of CAFC indications that a patent is “void ab initio” when found unpatentable as a result of reexamination. Standard Havens Products Inc. v. Gencor Industries Inc., 996 F.2d 1236 (Fed. Cir. 1993) (per curiam). In other words, if the patent never existed….what about that contra

Yesterday, 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, 6,503,156, 6,506,130, 6,595,873)

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.

In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.

So, yesterday, the Board learned all about Acushnet, a company known for their balls.
Continue Reading Callaway Golf’s Last Stand in Patent Reexamination

Widely Asserted Patent Claim Held Invalid at USPTO

The Rambus patent portfolio is well known, if not notorious, in the semiconductor industry. Over the years, Rambus has aggressively pursued licensing deals with Infineon, Hynix, Samsung and others. More recently, Rambus has been on the offensive against industry stalwarts such as Broadcom, Freescale, LSI, MediaTek, nVidia and ST Micro. 

As with any high value patent disputes, concurrent patent reexamination proceedings have been initiated at the USPTO against the Rambus portfolio. While these proceedings have largely co-existed without greatly impacting the Rambus litigation juggernaut, that may change as appeal proceedings conclude at the USPTO. 

In a Board of Patent Appeals & Interferences (BPAI) decision today, a decision rejecting Rambus’ U.S. Patent 6,034,198 in view of certain prior art was affirmed.…

Continue Reading Rambus Tripped Up at USPTO

Dispute with USPTO Ripens for District Court?

As some may recall, in 2009 patent owner Sigram Schindler pursued a declaratory judgment action against the USPTO in the Eastern District of Virginia. (EDVA). The DJ action questioned the propriety of foreclosing district court review of USPTO action in the ex parte patent reexamination of Sigram’s U.S. Patent 6,954,453.

More specifically, the DJ action (previous discussion here) sought a determination as to whether the USPTO’s interpretation of 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a Patentee in an ex parte patent reexamination from obtaining judicial review of a decision of the Board of Patent Appeals & Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.

Rather than deciding the issue, the EDVA simply noted that the question was not yet ripe due to the absence of a BPAI decision. Yesterday, a decision issued (here) in the reexamination (90/010,017) affirming the examiners rejection of the reexamined claims. Seems like matters have ripened…..
Continue Reading Sigram Schindler Appeal in Patent Reexamination Fails

Substantial Evidence Found Lacking in Rejection of Means-Plus-Function ClaimYesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.The ‘503 Patent is directed to a spray nozzle technology which provides a circular shield about the spray nozzle to preclude certain particles from entering the spray field prematurely. Claim 5 is written in a Jepson format, and includes a means-plus-function element (don’t try this at home).  The MPF element is a “shielding means.” (read my earlier post on why MPF claims are very desirable in patent reexamination). The  shielding means recites a function of shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly . . . The structure of the specification included both a physical shield and an air barrier.In rejecting claim 5, the USPTO (Control No. 90/008,482) identified a prior art system which utilized a burst of air to clear clogged particles from a nozzle. Claim 5 was rejected as obvious in view of this system. Furthermore, Patentee’s evidence of secondary considerations of non-obviousness was rejected as being related only to the physical barrier embodiment.On appeal, the CAFC explained:The Board properly found that [the art reference] teaches modulating gas flow in the coating apparatus to control particle agglomeration. It is readily apparent, however, that this technique does not shield circulating particles from entering the initial spray pattern. [The art reference] teaches a way to remedy the blockage caused by particle agglomeration using bursts of air. In contrast, Glatt’s invention prevents the agglomeration from occurring in the first place. The Board’s finding that [the art reference] teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because [the art reference] does not teach shielding. [The art reference’s] air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simultaneously, and more importantly, neither of these functions constitutes shielding.With respect to the secondary indicia, the CAFC additionally pointed out that,To the extent the PTO asserts that Glatt needed to submit commercial success evidence from multiple embodiments for that evidence to be commensurate in scope with claim 5, this position is not consistent with our precedent. It seems unlikely that a company would sell a product containing multiple, redundant embodiments of a patented invention. The fact that Glatt’s commercial products only contain one type of shielding means does not make its commercial success evidence irrelevant. Under the PTO’s logic, there would never be commercial success evidence for a claim that covers more than one embodiment. Rather, we have consistently held that a patent applicant “need not sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success.” In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (quoting Applied Materials, Inc. v. Adv. Semi-conductor Materials Am., Inc., 98 F.3d 1563, 1570 (Fed. Cir. 1996)).Although Glatt was successful on appeal, the appeal delay is not without consequence. During the prosecution phase of the patent, while claim 5 was retained in original form, claim 8 was amended  (all other claims subject to reexamination were canceled). Claim 8 was originally indicated as allowable on May 20, 2008, but this claim will not exist in amended form until printed with the reexamination certificate. Thus, the appeal delay has effectively surrendered 3 years of patent term for claim 8 (the printing process will take at least another 12 weeks).

Yesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.…

Continue Reading CAFC Reverses Rejection in Patent Reexamination

Lear Doctrine Avoided by Metabolite?

In a post last week, it was reported that U.S. patent 4,940,658, the subject Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted) had withstood an ex parte patent reexamination challenge at the USPTO. Specifically, the BPAI reversed the examiner rejection of claims 13, 15-17 and 33 and refused to reconsider their decision in the face of a rare patent examiner request for rehearing (90/008,305).

Aside from the ongoing patent battle raging between Lab Corp. and Metabolite, there is also a contractual dispute before the United States Court of Appeals for the Tenth Circuit involving these same companies. Metabolite is arguing that Lab Corp. unlawfully terminated an earlier licensing agreement. In order to have lawfully terminated their agreement, Metabolite argues that Lab Corp. must prove their products do not infringe the ‘658 Patent, but they have lost this battle at trial. Likewise, Metabolite argues that if Lab Corp is attempting to argue lawful termination based upon patent invalidity (i.e., Lear Doctrine), the BPAI has recently disproven this theory as well.
Continue Reading LabCorp’s Failed Patent Reexamination Challenge At Issue in Contract Dispute

Rare Examiner Request Filed for Patent of LabCorp Fame

U.S. Patent 4,940,658 relates to an assay for Sulfhydryl Amino Acids and methods for detecting and distinguishing Cobalamin and Folic Acid deficiency. This patent previously made headlines as the subject of the 2005 Supreme Court appeal that sought to explore the patentable boundaries of  “natural phenomena.” Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted). Specifically, the defendants argued that the patent related to detecting a natural phenomena, namely, a vitamin B12 deficiency.

In 2006, third party requester General Atomics sought ex parte patent reexamination of the ‘458 Patent.(90/008,305) Of course, as patent reexamination may only consider questions of validity that relate to patents or printed publications, statutory subject matter considerations were never at issue; instead, only prior art rejections were applied in the patent reexamination.

Initially, the USPTO rejected certain claims of the ‘658 Patent, forcing the Patentee to pursue the case to the BPAI (ex parte Competitive Technologies, Inc. and The Trustees of Columbia University (Appeal 2009-005519)). The BPAI reversed the examiner’s rejection of the claims in July of 2009. Once reversed, as per usual, the examiner was ordered to withdraw the rejections, and allow the patent to exit reexamination.

Instead, the examiner opted to file a very rare, request for rehearing.
Continue Reading Examiner Requests BPAI Reconsider Decision to Reverse

Last thing I remember, I wasRunning for the doorI had to find the passage backTo the place I was before — Hotel CaliforniaBack in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.So, is this “do-over” tactic legitimate?The dispute as to statutory interpretation relates primarily to 35 U.S.C. § 141 and 35 U.S.C. § 306, and changes brought about by the American Inventors Protection Act of 1999 (AIPA).The USPTO interprets Public Law 107-273, section 13202(d) (codified as 35 U.S.C. § 306), as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the 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.Patentees argue that the USPTO’s attempt to regulate outside conduct is ultra vires, and at odds with the plain language of 35 U.S.C. § 306. The AIPA of 1999 introduced inter partes reexamination; there was no purpose to change any aspect of ex parte patent reexamination practices. Of course, the Public Law does use the loose language “any reexamination,” but this same language was added to 35 U.S.C. § 141 as it relates to inter partes patent reexamination.Curiously, in the Regents complaint (here), the reexamination is referred to as an “application” in paragraphs 6, 10 and 11.  Regents also goes as far in paragraph 11 to ask that the Director to “issue a patent.” I can only assume the use of this improper terminology is deliberate. For example, 35 U.S.C. § 141 and 145 primarily refer to “applicants” and “applications.” In patent reexamination there are no “applicants” only Patent Holders (See 35 U.S.C. § 134). Perhaps Regents is hoping to convince the court that the distinction is meaningless;  of course it is not. Anyone that has ever assumed that extensions of time in patent reexamination are a matter of right (under 37 CFR § 1.136) learns very quickly that this distinction is quite meaningful. (contrast with 37 CFR § 1.956)PPG Comment: There has to be predictability and finality to patent reexamination, otherwise the entire justification for its existence is eviscerated.  With pendencies of patent reexamination lasting several years (as evidenced by Regents, filed in 2005), further de novo review will just prolong an already lengthy proceeding.Certainly in the past, the PTO has been inconsistent in the treatment of new grounds of rejections on appeal, after final, etc., In such instances, I would agree that Patentees are at a disadvantage.  However, the solution to this problem is not to provide a new avenue for delay, abuse and expense, but to allow Director Kappos to right the ship—which he appears to be doing.  The newly proposed appeal rules address the concern of new grounds of rejection. If a Patentee fails to seasonably present evidence otherwise, a second bite at the apple is simply unwarranted.Note: The current patent reform bill, S.515, seeks to end the debate once and for all by expressely foreclosing district court actions for Patentees appealing an adverse ruling in ex parte patent reexamination.

Back in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.

Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.

So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?

The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.

So, is this “do-over” tactic legitimate?
Continue Reading Regents of the University of California Pursue New Patent Reexamination in District Court

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations.
Continue Reading New BPAI Appeal Rules Proposed