Ex Parte Reexamination

Subscribe to Ex Parte Reexamination via RSS

In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.  Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.  This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.

On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that
Continue Reading E.D. VA. Declines Sigram Schindler’s Bid to Revisit Options for Review of BPAI Decisions in Ex Parte Reexamination

Any requested reexamination filed while an earlier filed reexamination is pending must raise an SNQ different than that raised in the pending reexamination. Each request for reexamination must raise its own SNQ, as compared to the pending reexamination proceeding for the same patent. Previously, one could use the same SNQ as in the pending reexamination.…

mcePaste” style=”overflow: hidden; left: -10000px; width: 1px; position: absolute; top: 0px; height: 1px;”>On April 14, 2009, USDJ David Folsom issued an order denying Defendant’s, Fanuc Ltd., et al, motion to stay litigation pending the outcome inter partes and ex partes reexamination of patents-in-suit: 3 inter partes, 1 ex parte. ROY-G-BIV Corp. v. FANUC Ltd. et…

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…

This Post is the beginning of bi-weekly series geared toward post grant practitioners, grouped under the heading “Patent Praxis” Changes made to patent claims in reexamination must comport with 35 U.S.C. § 305. Perhaps the most well known prohibition of this statute is that claims cannot be broadened during reexamination. This statutory prohibition…

Singulair is Merck’s best-selling drug, with sales of nearly $1.1 billion in the third quarter of 2009.  However, Merck’ patent covering Singulair has also been hotly contested in court, at the FDA, and, most recently, at the USPTO. The Singulair patent, U.S. Patent No. 5,565,473, issued in 1996, covers the basic compound as well as a method of treating asthma.  The ‘473 patent has been the subject of ongoing litigation between Merck and generic manufacturer Teva Pharmaceuticals.  Merck filed three suits against Teva in April of 2007, May of 2007, and January of 2009, all in the U.S. District Court for the District of New Jersey, claiming that Teva infringed the ‘473 patent by filing an ANDA for generic Singulair. Because the suits all asserted infringement of the ‘473 patent, the later two suits were stayed pending a final decision on the merits in the first suit. On August 19, 2009, Judge Garrett E. Brown of the U.S. District Court for the District of New Jersey ruled that Teva’s generic drug would infringe Merck’s ‘473 patent, and ordered the FDA to stay market approval of the generic version of Singulair pending expiration of the ‘473 patent in 2012. Unfortunately for Merck, the success in the District Court represents only one front of battle for defending the validity of the ‘473 patent.  On April 27, 2009, four months prior to Judge Brown’s ruling, an ex parte reexamination request was filed for the ‘473 patent by Article One Partners LLC, a global research community which rewards Advisors for finding prior art to invalidate patents. The ex parte examination request was submitted with eight prior art documents in which Article One set forth over 276 pages of obviousness arguments.  The request was granted by the USPTO on May 28, 2009.
Continue Reading Merck’s Singulair Patent Survives Reexamination

Where does a Patent Owner go for judicial review after losing an ex parte reexamination appeal at the Board of Patent Appeals and Interferences (BPAI)? Prior to 2001, Patent Owners had a clear choice of filing suit against the USPTO in the U.S. District Court for the District of Columbia, or appealing adverse BPAI decisions to the Court of Appeals for the Federal Circuit (CAFC). In 2001, amendments to the patent statutes ( 35 U.S.C. §§ 141 and 145 ) in the American Inventor Protection Act (AIPA) appeared to eliminate the District Court option, providing only for appeal to the CAFC. However, a recent case filed in the Eastern District of Virginia questions the USPTO’s interpretation of the statutory changes set forth in MPEP § 2279. In Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.) the patent owner (Sigram Schindler) seeks a right to a trial de novo under 35 U.S.C. § 145 after an adverse decision of the BPAI in an ex parte reexamination (requested by Cisco Systems Inc.) of Sigram Schindler’s 2005 patent for a
Continue Reading Options for Judicial Review of Ex Parte Reexamination Decisions