Ex Parte Reexamination

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Last Friday we explained the case of Ex parte Yasukochi et al, in which the Patentee argued that a rejection applied in reexamination was considered during original prosecution, and thus, could not constitute an SNQ. (The rejection at issue did not appear in the original request for reexamination but was newly applied by the Examiner during the reexamination). On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure that must be addressed by petition. The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination.

Under the BPAI’s recent reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition would now be untimely (since more than two months have elapsed since the rejection was made).

Upon second thought, the USPTO has determined that issues
Continue Reading BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination

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.

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

The Importance of Interview Summaries in ex parte Patent Reexamination

Last Friday, Star Scientific (hereinafter “Star”) released an update on their ongoing ex parte patent reexaminations of U.S. Patents 6,425,401 & 6,202,649. The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.[1] As Star is a publicly traded company, and the litigation is fairly high profile, the update was widely reported to outlets such as the Wall Street Journal and CNBC.

The Star press release explained:

We received notice today from the US Patent & Trademark Office that it was terminating the reexamination of Claims 4, 12 and 20 of the “649” patent and claim 41 of the “401” patent that had been requested by RJ Reynolds in early 2009. The reason cited for the termination of the process was that the patent owner’s response to the Nonfinal Office Action that was filed on 11/10/09 allegedly did not include “a [separate written] summary of the interview, as is required by 37 CFR 1.560(b).” We want to make clear that the claims were not cancelled because reexamination of the claims found them invalid, but rather because the PTO asserted the patent owner did not comply with the procedural requirement for providing a written interview summary. The reexamination proceeding “is subject to reopening by the [Patent & Trademark] Office, or upon petition,” and Star’s patent counsel will file petitions today to reopen the proceedings.

We disagree with the termination in the strongest possible terms, and we are taking all necessary actions to reopen the reexamination process. Star’s patent counsel, Banner & Witcoff, believe that all appropriate steps were taken during the reexamination proceedings. The PTO failed to acknowledge a timely written summary of the interview that had been filed within one month from the date of the interview. The firm is confident that the petitions to reinstate the proceedings will be granted so that the claims can be evaluated on their merits.

Upon review of the Star reexamination file histories, I will at least agree that the terminations have nothing to do with validity.

On the other hand, in my opinion, appropriate steps were clearly not taken during the reexamination proceedings. Likewise, the petitions filed last week will almost certainly be denied.
Continue Reading Learning From the Mistakes of Star Scientific

smoking-gunass=”size-full wp-image-2005 alignleft” title=”smoking-gun” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/smoking-gun.jpg” alt=”smoking-gun” width=”135″ height=”143″ /> The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:  

In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended.  {Emphasis added.}

However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner?
Continue Reading Preventing Harassment in Patent Reexamination: MPEP § 2240’s Smoking Gun Requirement

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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution.  Such inadvertant issues can currently serve to jeopordize an otherwise valid patent.  With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.

For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent.  The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent
Continue Reading Inoculate Your Patents from Inequitable Conduct Allegations?

–Concurrent Litigation a Driving Force– The USPTO has released their year end statistics for ex parte and inter partes patent reexamination.  The ex parte statistics may be found here, the inter partes here.  Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the…

The U.S. District Court for the Southern District of Indiana in Cook, Inc. v. Endologix, Inc. (Case No. 1:09-cv-01248) has stayed the litigation of Cook’s stent patents pending the outcome of the ex parte reexaminations of the patents-in-suit. U.S. Patent Nos. 5,755,777 and 5,035, 706 (now expired) have been asserted by Cook against Endologix’s Powerlink…