In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages. This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. 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 infringers. This past week, such a reexamination misstep was analyzed
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The Patent Reexamination Paradox of 35 USC 112
It would be so nice if something made sense for a change — Alice (in Wonderland)
Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851). Claim 1 recites the following elements:
A portable computer unit comprising:
(a) a portable computer housing;
(b) computer means positioned. . .
(c) flat panel display means interfaced to . . .
(e) closure panel means having. . .
. . .said computer housing means and said closure panel means
incorporating electrical connecting means adapted to . . . (emphasis added)
Curiously, the Patent Owner took the position that ONLY the electrical connecting means invoked 35 U.S.C. § 112 6th paragraph (i.e., means-plus-function-element). In other words, even though most other claim elements used the same style of “means” language, these features were somehow different.[1] Understandably, the examiner was perplexed as to the rationale for the distinction. As a result, it appeared that the Examiner instead applied a broadest reasonable interpretation to all of the elements that recited “means” language.
Although, in the end, the BPAI affirmed the examiner’s rejection, the decision was based on a means-pus-function interpretation. In the decision, the BPAI noted at page 3:
The examiner has a point that it is hard to discern any principled difference between the way “means” is used in the claim such that one skilled in the art would understand that only one such use invokes paragraph 6. The ordinary remedy for such confusion is to reject the claim under 35 U.S.C. 112(2) for indefiniteness. The Office does not reject original patent claims in reexamination under § 112, however.
Next, in affirming the Examiner’s rejection of claim 1, the BPAI analyzed the claims under 35 USC § 112 anyway.
Continue Reading The Patent Reexamination Paradox of 35 USC 112
District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)
Different 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.)
CAFC Applies The Wrong Claim Interpretation Standard in Patent Reexamination
In re Suitco Surface, Inc. (Fed. Cir. 2010)
Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.
As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.
In reversing the BPAI, the CAFC noted that:
“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”
The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”
While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because
Continue Reading CAFC Applies The Wrong Claim Interpretation Standard in Patent Reexamination
Expanded BPAI Panel Rehears Reexamination Decision on Expired Katz Patent
On 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
USPTO Reexamination of Means Plus Function Claims
g class=”size-medium wp-image-1043 alignleft” title=”goodfellas_painting-small” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/goodfellas_painting-small-241×300.jpg” alt=”goodfellas_painting-small” width=”241″ height=”300″ />–A Tale of Two Statutes —
When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas. In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows: Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? “
When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.
It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications. Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]
In this regard, MPEP 2258 (II) notes that:
Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . . (emphasis added)
The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with
Continue Reading USPTO Reexamination of Means Plus Function Claims
The Rambus Patent Rexaminations
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Fashioning New and Improved Weapons?
Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts. In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees. At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.
More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC. In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid. These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009. To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).[1]
Why the inconsistency between the two government bodies?
In short, the standards of proof are different, as are the rules of claim interpretation. In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity. In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.[2]
So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?
It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status. If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding. If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on. However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®.
Continue Reading The Rambus Patent Rexaminations
“Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?
In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.” Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears. One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference. In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009). A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit. In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim
Continue Reading “Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?