Claim Interpretation

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Claim Changes in Patent Reexamination & Reexamination Certificates

When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent reexamination as a cost effective mechanism to dissolve the dispute.

In many patent disputes, patent reexamination is conducted in parallel to a district court or ITC proceeding. Of course, as the reexamination proceeding advances, the reexamination prosecution history creates new defensive opportunities such as, additional prosecution history disclaimer and/or estoppel arguments; enhanced, or additional  inequitable conduct positions; and new non-infringement arguments.

Claim changes and/or cancellation are a boon to defendants as potentially mooting current infringement contentions or at least creating an intervening rights defense.  Yet, it is important to keep in mind that such claim changes are not effective until the proceeding is concluded.
Continue Reading When is a Claim Finally Dead in Patent Reexamination?

Parallel Patent Reexamination Qualifies as Newly Discovered Evidence Under Fed. R. Civ. P. 60(b)

It is well established that the USPTO utilizes different standards of evidence and claim interpretation in patent reexamination. Likewise, there is no presumption of validity in patent reexamination. For this reason, district court/ITC claim construction findings (i.e., Markman Orders) are not binding on the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Yet, the findings of the USPTO with regard to claim construction can have significant impact on the court rulings.

For example, this past January, in St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential), the CAFC reversed a lower court claim construction ruling, based in part, on the findings of USPTO examiners in patent reexamination,…

Continue Reading Can a Favorable Patent Reexamination Record Undo a Markman Order?

BPAI Definition of Email Found Unreasonable by CAFC

Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue. Today, the CAFC, while affirming much of the UPSTO’s fact finding, did indeed remand the case for further consideration of a new definition of “electronic mail” or “electronic mail message.”

The eight related appeals included thousands of claims of the NTP portfolio, of note, the USPTO rejected all but one of the previously adjudicated (RIM Litiigation) NTP claims in patent reexamination. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected and affirmed (BPAI). Rejections were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims were added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

Today, the CAFC affirmed the rejection of all 764 claims of the ‘592 patent. (NTP I, here).

A second decision (NTP II, here), which pertains to the remaining patents noted above as well as a few others, Vacated-in-part, Reversed-in-part, and Remanded previous determinations of the BPAI.

What does all of this mean for NTP?…

Continue Reading CAFC Sends NTP Patent Reexaminations Back to USPTO

Claim Interpretation Practices in Patent Reexamination

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. In past posts, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination. More recently, I have discussed changes to petition practice for accelerating petition processing, and avoiding common petition issues when a Third Party withdraws from an inter partes patent reexamination.

With June drawing to a close, and with public comments due to the USPTO on the Streamline Proposals due today (June 29, 2011), this will be my final post of this multi-part series.

In this post I explain how a relatively common claim interpretation deficiency is overlooked by the USPTO, leading to unnecessary reexamination proceedings and expense for Patent Holders.
Continue Reading Reigning in Patent Reexamination Grant Rates

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

USPTO Forced to Turn a Blind Eye to Support Issues in Patent ReexaminationLast year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2nd is not possible.  As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)Although the Patentee in Avid appeared to identify structure in their brief, the Board indicated that the cited structure did not clearly correspond to the claim language, explaining:In the absence of any specific structure in the Specification corresponding to the claimed “means for extracting data,” we construe the “means” as including any structure that can be represented by a box that performs the recited function or equivalents thereof. (emphasis added).If this had been an appeal of a patent application, a 112 2nd paragraph rejection would have certainly been issued, not so for patent reexamination.Ultimately, the Avid appeal affirmed art rejections of the MPF claims. As such, this claim interpretation conundrum may seem harmless. Still, in appeals where the art rejections of MPF claims are reversed, application of the BRI standard effectively broadens the scope of the reexamined claims– in violation of the statute. Perhaps more significantly, the creation of such a record is unnecessarily misleading the public as to the proper scope of such claims.MPF support issues are increasingly case dispositive in patent litigation.  Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.Cir. 2008) See also Blackboard, Inc. v. Desire2Learn Inc., No. 2008-1368, slip op. at 21 (Fed. Cir. July 27, 2009).Interestingly, in a different patent reexamination context, a challenge to 112 written description is permitted. For example, if the patent subject to the reexamination request claims priority to a parent case, intervening prior art may be presented together with an argument that the priority claim is ineffective as to written description. Presumably, the 112 analysis is permitted in this context as the request is not attacking 112 support of the reexamined patent, but instead, corresponding disclosure of a parent. Therefore, the SNQs presented are still based on patents and printed publications as they do not explore 112 issues of the underlying specification.It seems that MPF claims cannot be properly reexamined at the USPTO until the conflict between the above noted patent reexamination statutes is remedied. Although the current patent reform legislation before Congress addresses many aspects of post grant practice, this issue remains outstandi

Last year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2nd is not possible.  

As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. 

In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)…
Continue Reading Deficient Means-Plus-Function Claims Broadened in Patent Reexamination

Additional Prosecution History Proves CrucialA successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer, may provide new, non-infringement positions to defendants.This week, the CAFC relied upon statements made by a Patentee in the patent reexamination of U.S. Patent 5,355,964 to affirm claim construction findings of the EDVA and NDCA.In American Piledriving Equipment Inc., v. Geoquip, (CAFC 2011), the court explained:The prosecution history removes all doubt that one of ordinary skill in the art would have understood the term “integral” to mean “formed or cast of one piece.” During reexamination, American Piledriving attempted to distinguish a prior art reference by arguing this very point . . . American Piledriving nevertheless argues that it did not clearly and unmistakably disavow the construction of “integral” it urges on appeal. It points out that it did not amend its claims and made multiple arguments to overcome the asserted prior art reference. American Piledriving contends that the statement was unnecessary to overcome the reference and that the examiner explicitly disagreed with it. “[W]e have made clear . . . [that] an applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Moreover, regardless of whether the examiner agreed with American Piledriving’s arguments concerning “integral,” its statements still inform the proper construction of the term. See Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005) (“An applicant’s argument made during prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the argument.”); Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We have stated on numerous occasions that a patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”). American Piledriving unambiguously argued that “integral” meant “one-piece” during reexamination and cannot attempt to distance itself from the disavowal of broader claim scope. (emphasis added)The above result bears out a very important application of patent reexamination concurrent with litigation, namely, the creation of additional fodder for claim construction purposes.Clearly, a successful patent reexamination from a defendant perspective does not necessarily require that a Patentee cancel or amend claims. As such, when facing a suit in a district court in which a Markman Hearing is scheduled some 12-18 months in the future, initiation of patent reexamination at the outset may prove an effective strategy to focus the later deba

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer, may provide new, non-infringement positions to defendants.

This week, the CAFC relied upon statements made by a Patentee in the patent reexamination of U.S. Patent 5,355,964 to affirm claim construction findings of the EDVA and NDCA.
Continue Reading Patent Reexamination Exposes Double Talk

terms-of-disservice

Infamous Katz Portfolio Withers Under Pressure of Patent Reexamination

USPTO empirical data is quite helpful for determining the frequency by which claims are amended, cancelled, or confirmed in patent reexamination. Yet, when it comes to the overall efficacy of patent reexamination, USPTO statistics only tell part of the story.

A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to defendants. Likewise, such statements may limit the Patentee’s ability to distinguish the prior art.

In the ongoing patent reexaminations of the Katz portfolio, there have been significant victories for challengers. However, as made clear by the CAFC last week (In re Katz Interactive Call Processing Patent Litigation) not every victory shows up in USPTO statistics as cancelled/amended claims.
Continue Reading Patent Reexamination Statements Hamper Katz Portfolio

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?

Microsoft v. i4i: Legislative Intent of Patent Reexamination?The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence. Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.So, why does the USPTO use a different standard? Microsoft’s brief, as well as several of the supporting amicus briefs, cite to In re Etter,756 F.2d 852 (Fed. Cir. 1985) for the proposition that there is no presumption of validity at the USPTO in patent reexamination. Based upon this, the briefs conclude that if this lower standard is good enough for the USPTO, then why not the courts?Absent in any of these briefs is the explanation in Etter that explains the rationale behind the difference, namely:In litigation, where a patentee cannot amend his claims, or add new claims, the presumption, and the rule of claim construction (claims should be construed to save them if possible), have important roles to play. In reexamination, where claims can be amended and new claims added, and where no litigating adversary is present, those rules and their rationale simply vanish. (emphasis added) Etter at 859.So, if Congress has provided for the very relief Microsoft is requesting via patent reexamination, how is the intent of Congress not crystal clear in this respect? Can the SCOTUS provide the seemingly legislative remedy sought by Microsoft? Perhaps anticipating the argument that the patent reexamination statutes reinforce the CAFC’s reading of § 282, and demonstrate a Congressional intent to provide an alternative forum for prior art not previously considered, several amicus briefs go beyond Microsoft’s passing discussion of patent reexamination.In one supporting brief, it is argued that a final determination in a litigation under 35. U.S.C. § 317(b) would estopp the same litigant from invalidating a patent in inter partes patent reexamination. The argument is that such estoppel results in a litigant being exclusively held to the clear and convincing standard, despite the existence of the lower patent reexamination standard. It is argued that such a result is inconsistent with the legislative intent to “correct governmental mistakes,” that is, unless the standards are made the same in both proceedings.This is a very strange take on inter partes estoppel.The very point of the estoppel provisions is to thwart the conduct suggested in the brief, namely, serial attacks on a patent in different forums by a same party (i.e., harassment). Third parties should not be “resorting” to inter partes patent reexamination after losing a litigation, but instead, seeking such relief in the first instance. Further, ex parte patent reexamination is unaffected by § 317(b).The ultimate decision will likely focus on how the CAFC divined the clear and convincing standard from § 282 in the first instance. Still, the creation of the inter partes patent reexamination statutes, as well as the pending reform legislation would seem to provide ample fodder for arguing that Congress is well aware of the CAFC’s jurisprudence in this regard.For another interesting take on the interplay of patent reexamination to the § 282 dispute, note the example jury instructions in the IBM brief.This case is going to be very very interesti

The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.

Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.

Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.

In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.

So, why does the USPTO use a different standard? …
Continue Reading Patent Reexamination Statutes Before Supreme Court