Appeals

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copycatGEOSPAN Corporation filed a lawsuit in March 2008 in the United States District Court for the District of Minnesota, alleging that Pictometry infringed  GEOSPAN’s U.S. Patent No. 5,633,946.

In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)

In its request, GEOSPAN set forth substantial new questions of patentability based upon  a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.

On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting  the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the  inventors’ work where none of the inventors is an author of the printed publication used to reject the claims. 
Continue Reading Reporter’s Description of Invention at Issue in Patent Reexamination

USPTO_LogoIn 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…

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.

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

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

 

thinkingRejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On 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

USPTO_LogoIn 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…

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

anti-ms2As 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

stemOn April 28, 2010, The USPTO’s Board of Patent Appeals and Interferences (BPAI) rejected claims 1-3 of Wisconsin Alumni Research Foundation’s (WARF) “Primate Embryonic Stem Cells” Patent (U.S. Patent No. 7,029,913, the ’913 patent).  The WARF patent is licensed to Geron Corporation and is subject to Inter partes Reexamination as Control No. 95/000,154.  The BPAI reversed the Examiner’s decision to allow the claims. The claims cover pluripotent human embryonic stem cells (ES) cultured in vitro. The request for inter partes reexamination of the ’913 patent was filed on July 17, 2006 by the Public Patent Foundation (PubPat) on behalf of The Foundation for Taxpayer & Consumer Rights (FTCR), now known as Consumer Watchdog. The BPAI decision does not affect two other WARF embryonic stem cell patents (U.S. Patent Nos. 5,843,780 and 6,200,806) that were challenged by FTCR in reexamination proceedings resulting in confirmation of the patentability of their claims in reexamination certificates. However, the rejection of the ’913 patent claims may have a reverberating effect on the stem cell industry. Following an order granting inter partes reexamination of the ’913 patent on September 29, 2006, the Examiner rejected claims 1-3 based on anticipation and obviousness rejections. However, in the Action Closing Prosecution
Continue Reading BPAI Rejects WARF Stem Cell Patent Claims in Inter Partes Reexamination Appeal

arrow-pointing-two-directions-400x400Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal
Continue Reading District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)