Concurrent Proceedings

Subscribe to Concurrent Proceedings via RSS

–Third Party Tactics in Reexamination —

Part II of our discussion on 2282/2686  Previously, we analyzed Patent Owner compliance with MPEP 2282/2686 in patent reexamination in the wake of Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir. 2009).  Specifically, the previous post explored the Patent Owner’s duty to notify the Office of concurrent proceedings (2282 for ex parte, 2686 for inter partes).   In this installment, we explore MPEP 2282/2686 relative to the duty to notify the Office of external proceedings, such as a district court litigation involving the patent at issue.   For example, 2282 provides:  Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. (emphasis added) The lack of ability to participate in an ongoing ex parte reexamination is deemed a significant drawback
Continue Reading The Evolution of MPEP 2282/2686

On September 18, 2009, the Board of Patent Appeals and Interferences affirmed-in-part Examiner’s rejection of several asserted claims in U.S. Pat. Re. 36,116 under 103(a) obviousness and 102(b) anticipation. The Board, however, did reverse Examiner’s 102(b) rejection of claims 1-5 and 35.  The patent is subject to concurrent litigation in the Eastern District of Texas.…

On September 15, 2009, the Board of Patent Appeals and Interferences reversed Examiner’s 103(a) rejection of claims asserted in U.S. Pat. No.  6,336,833.  The claims relate to “a watercraft … having a throttle actuator which responds to manual steering control for causing a steerable propulsion unit to generate a propulsive force upon turning the steering…

 

Is it Possible to Comply with Larson Manufacturing?

Two weeks ago, we discussed the merger of concurrent post grant proceedings relating to the same patent at the USPTO.  In addition to concurrent proceedings of a same patent, it is also quite common for entire portfolios of a Patent Owner to be subject to reexamination.  In such cases, the reexamination of different patents (including direct continuations of one another) are not merged.  Likewise, there may also be ongoing continuation patent application examination (i.e., patent applications claiming subject matter directed to the same invention in applicant’s earlier filed patent and meeting the conditions of section 120 of the patent statutes) being examined concurrently with the parent patent in reexamination.  However, reexamination proceedings are not merged with non-reissue application examination.

In such concurrent proceeding situations, what are the obligations of the Patent Owner in satisfying the duties of disclosure, candor and good faith?
Continue Reading Concurrent Proceedings & Patent Owner Compliance with MPEP § 2282/2686

Third party use of patent reexamination can be thought of as both a “sword” and a “shield.” In the “shield context”, patent reexamination may function to shield an infringer from litigation costs if the reexamination filing results in the stay of a federal district court infringement litigation. Likewise, the reexamination of a patent immediately prior to an imminent litigation may cast enough of a cloud over a patent to avoid litigation altogether, or to re-calibrate the licensing expectations. In this way, the shielding of unwarranted litigation expenses gains the infringer significant settlement leverage. Conversely, the use of a patent reexamination may also serve as a “sword”, providing offensive value. Aside from the obvious intervening rights, prosecution estoppel, and non-infringement positions that may be created by ongoing reexamination prosecution, a timely initiated reexamination proceeding may utilized in a more generic fashion to demonstrate
Continue Reading Strategic Application of Patent Reexamination in Litigation –Avoiding a Preliminary Injunction–