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Patent Community Awaits Crucial DecisionYesterday, the Supreme Court heard arguments in Microsoft v. i4i . 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

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Director Kappos Informs Examing Corps of Temporary Funding Today, Director Kappos provided the following announcement to the Examing Corps:            Although the Commerce Department indicated earlier in the week that the USPTO should prepare a plan to shut down, it appears that temporary funding exists to keep the office going for a few days. Full announcement

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buzzGoings on and Rumored Changes at the USPTO Spring 2011

With so much attention focused on the current patent reform debate, continued efforts within the USPTO to improve post grant performance may be going unnoticed. Below are just a few office initiatives and rumored developments. 

USPTO to Close Monday?

Assuming Congress does not arrive at a solution to the current budget impasse, the USPTO has been informed by the Secretary of Commerce that it is not exempt from a government shutdown.

Central Reexamination Unit (CRU)

Recently, the Office has begun reviewing examiner applications to join the Central Reexamination Unit (CRU) for a temporary detail (3 months, extendable for a year) (opening listed here). Selected examiners will be assigned to work
Continue Reading The Post Grant Buzz (Spring 2011)

Lack of Patent Reexamination Discussion in Microsoft Brief EmphasizedAs I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue. In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. The i4i brief (here) summarizes the patent reexamination arguments noting,A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing   standard by leaving the standard alone and instead making other changes, principally authorizing reexamination.  (emphasis added)Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next we

As I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  

In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue.

 In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. …

Continue Reading Patent Reexamination Statutes Support Clear & Convincing Standard

What Can be Fixed with a Certificate of Correction?One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.But, what happens when a COC seems to embrace substantive change?Is the patent now invalid?Are intervening rights created?Is there any effect at all? Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:13. An apparatus for decoding a compressed digital video signal, comprising:a means for receiving a compressed digital video bit stream; anda means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.This situation seems analogous to an intervening rights defense for patent reissue. In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.The court is correct. The question here is not one of intervening rights, but validity of the COC.For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.

One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.

But, what happens when a COC seems to embrace substantive change?

Is the patent now invalid?

Are intervening rights created?

Is there any effect at all? …
Continue Reading Can a Certificate of Correction Go Too Far?

Upcoming CLE Programs My partner, Stephen Kunin is the former Deputy Commissioner for Patent Examination Policy at the USPTO. He will be speaking at a few CLE events of potential interest to the post-grant community in the coming weeks. On March 21-22, PLI’s 5th Annual Patent Law Institute will make its way to San Francisco.

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Change on the Horizon for 2011

With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot programs are being introduced, and the pendency of reexamination proceedings is slowly improving. (I will post a podcast next week going through the full 2010 retrospective, so cancel those holiday plans!)

Looking forward to 2011 there is still significant uncertainty as to the status of patent reform, at least the kind expected from Congress. Will this be the year that something….anything…..comes out of Congress? Patent Reform is still on the minds of Congress, perhaps more so than in past years as it has the potential to be sold as a no-cost economic stimulus. Yet, courts and the USPTO continue to drive the real change in U.S. patent law, especially as it relates to post grant practice before the USPTO.

So, what can we look forward to in 2011?

Aside from the never ending patent reform drama, the CAFC is slated to decide three important patent reissue cases this year, In re Tanaka, In re Staats, and In re Mostafazadeh. Further, CAFC guidance on the inequitable conduct standard is imminent in Therasense, Inc. v. Becton Dickinson and Co. Meanwhile, the Supreme Court is considering perhaps the most important patent litigation case since Festo in i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp.

Finally, and perhaps of most interest to me, the USPTO is working on a new rules package to overhaul aspects of patent reexamination and patent reissue practice.
Continue Reading Post Grant Expectations For 2011

Detroit_sealass=”alignleft size-thumbnail wp-image-4707″ title=”Detroit_seal” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/12/Detroit_seal-150×150.jpg” alt=”Detroit_seal” width=”150″ height=”150″ />In a teleconference with reporters on Thursday, December 16, 2010, Commerce Secretary Gary Locke – whose department includes the Patent Office – announced that the U.S. Patent and Trademark Office will open its first-ever satellite office in Detroit in the summer of 2011.  Also during this teleconference, it was stated that Detroit will be the first in what could be a few satellite offices scattered around the country (Denver is known to be making a strong push for a satellite office).   The objective of the satellite offices is to increase retention of the examining corps, as well as to increase the number of examiners, as the Office attempts to decrease the ever-increasing backlog of pending patent applications.  According to the Associated Press, officials said Detroit was chosen because of the area’s high percentage of scientists and engineers — many with auto industry background — and the region’s major research universities. Alternatively, PTO insiders indicate that Detroit already has a Department of Commerce facility that helps sidestep congressional red tape. (besides, no point having examiners distracted by competitive baseball and football teams, works in DC after all)
Continue Reading USPTO to Open Satellite Office in Detroit

Upcoming CLE Reviews the Impact of Claim Drafting Defects

Although I try to keep the shameless self promotion to a minimum (stop chuckling)….

If like me you are stuck working next week, what better way to spend it then to listen to my glorious monotone voice! Monday December 20, I will participate along with my…