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Cert Granted Today on Important Patent MatterSeems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision. Not surprisingly, Microsoft’s petition seized upon this issue, noting:The Federal Circuit’s longstanding rule that a challenger must prove its invalidity defense by clear and convincing evidence even “when prior art is presented to the court which was not considered by the PTO,” Uniroyal, 837 F.2d at 1050—which is to say, whether or not the PTO was aware of the prior-art evidence when it issued the patent—cannot sensibly be reconciled with this Court’s statement that the “rationale underlying the presumption . . . seems much diminished” when a defense of invalidity is based on evidence that the PTO never considered, KSR, 550 U.S. at 426.While recent cases such as Bilski and KSR presented important questions of U.S. patent law, this case may have a more far ranging impact on the U.S. patent system. Will the Supreme Court pronounce a dual standard for district courts depending upon whether the art was previously considered? Will a changing in standard further bury the USPTO in IDS filings?  What does “not considered by the USPTO” mean?Will every current defendant seek to have ongoing district court validity determinations held in abeyance/stayed until after this ruling? What will this mean for patent reexamination which already offers the lower standard to defendants, and what if any congressional intent is demonstrated by the existence of the patent reexamination statutes? Does the standard really need to be changed in light of current administrative options?  Stay tuned.

Seems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.

Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision.
Continue Reading Supreme Court to Hear Arguments in Microsoft/i4i Dispute

Bipartisan support and economic spin keep hope alive. With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it………Congressman Smith characterized the patent reform pending legislation as:Nearly 30 percent of American workers are found in intellectual property industries such as health care, entertainment, renewable energy and information-technology.  Patents protect this intellectual property and encourage the creativity and innovation that generate jobs and increase productivity.The theft of intellectual property costs Americans billions of dollars and thousands of jobs.  When inventors and businesses invest in research and development that result in patents, they have the right to benefit from their efforts.  The American economy benefits too by the jobs these patents create.We need to improve our patent system to better protect intellectual property and help ensure that good patents are approved more quickly.  There is bipartisan support for much-needed revisions to our patent system, which has not been significantly updated in over half a century.Patent reform appears to have bipartisan support, and can be sold to the public as a form of economic stimulus. It is very unlikely we will see it this year….but you can bet it will be sold to us, in some form, next year….but then again, we have been saying that for many yea

With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.

One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it…………
Continue Reading Patent Reform Still on the Table

USPTO Seeks Chief Administrative Patent JudgeAs discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).Former Chief Judge Fleming championed the reform of the appeal process by advocating a rule package designed, arguably anyway, to allow for more focused review. (proposed appeal practice rules). Yet, the proposed changes to appeal practice, like the more infamous rules package of Tafas v. Dudas fame, were not greeted with much enthusiasm by stakeholders.Once again, the winds of change have seemingly swept over USPTO management as the Office is currently in the market for a new, Chief APJ. (apply here)  The next chief will have quite a mandate, especially should patent reform ever become reality (i.e., transformation to Patent Trail & Appeal Boar

As discussed here daily, many important patents will, at one time or another, be the subject of a patent reexamination or patent reissue proceeding. In such post grant proceedings, the Board of Patent Appeals & Interferences (BPAI) plays a prominent role in reviewing the decisions of the Examining Corps….eventually.

Progress toward the reduction of reexamination appeal pendency has been slow. Of course, post grant proceedings are not the only responsibility of the BPAI. Indeed, the Board continues to languish under the weight of the ex parte appeal backlog, primarily patent application appeals. Roughly 17,000 ex parte appeals are currently pending at the BPAI. (along with interferences and inter partes reexamination appeals).

Former Chief Judge Fleming …
Continue Reading BPAI Seeks New Chief Judge

JetsThank god football is back, where else but NFL week 1 does blind faith reign supreme and delusional face painters make crazy predictions about future outcomes….but enough about Dallas Cowboy fans. Occasionally, in the otherwise mundane world of patent reexamination, a press release is issued that is so self serving one can only conclude the author spends time face painting on Sundays.

As discussed previously, with so many high profile patent litigations subject to concurrent patent reexamination, it is quite common for self serving press releases to be issued by the participating parties. For public companies, SEC oversight and shareholder law suits tend to keep the release very factual and straightforward. Other less accountable organizations, tend to be a bit more aggressive, like my new all time favorite, Mercury Cable.

Not only is Mercury Cable seemingly guaranteeing a win, they also curiously point out that most patent reexaminations result in confirmed claims. USPTO statistics to the contrary be damned!
Continue Reading Mercury Cable & Patent Reexamination Trash Talk

plavixLast Friday the USPTO issued a Notice of Intent to Issue a Reexamination Certificate (NIRC) for U.S. Patent 4,847,265, directed to the well known blood thinner Plavix.®  The Plavix Patent was challenged by Apotex Inc, a Canadian manufacturer of a generic version of the drug.  

Apotex was unsuccessful in their challenge of the patent in…

top5ass=”alignleft size-full wp-image-1688″ title=”top5″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/top5.jpg” alt=”top5″ width=”116″ height=”114″ />Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over).  Until we can figure out a way to correct the calculation,…

truth_and_lies_tg class=”alignleft size-full wp-image-1643″ title=”truth_and_lies_t” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/truth_and_lies_t.gif” alt=”truth_and_lies_t” width=”314″ height=”115″ />–Guest Posting–

Mr. Raymond Mercado is a doctoral student in political science at Duke University

The Use and Abuse of Patent Reexamination

The presence of a threshold requirement (the “substantial new question of patentability” or “SNQ”) intended to protect patent holders from unwarranted reexamination proceedings reflects Congressional recognition that reexamination—like the patent application process—is susceptible to fraud and other misconduct.  Yet, whereas the literature and caselaw dealing with inequitable conduct by patentees is vast, there has been surprisingly little exploration of misconduct on the part of reexamination requesters.  My paper, The Use and Abuse of Patent Reexamination, attempts to fill this gap by examining the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders.

Suppose that a third-party requester were to fabricate or mischaracterize prior art, for example by misrepresenting the publication date of an obscure reference, deliberately mistranslating a foreign reference, altering the drawings and figures, or simply by proffering an elaborate but objectively unreasonable interpretation of the prior art. 
Continue Reading Recourse for Abuse of The Patent Reexamination Process?

amazon_craveass=”alignleft size-full wp-image-1626″ title=”amazon_crave” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/amazon_crave.jpg” alt=”amazon_crave” width=”181″ height=”119″ />Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com.  As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.  

In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed patentable over the submitted art of the request.

Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment.  This amendment was submitted to the USPTO in 2007.  It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right? 

Wrong

Yesterday the typical
Continue Reading Hobbits & Wizards –The Amazon 1-Click Reexamination —

DrudgeSirenass=”alignleft size-full wp-image-1538″ title=”DrudgeSiren” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/DrudgeSiren.gif” alt=”DrudgeSiren” width=”50″ height=”69″ />As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered
Continue Reading DETAILS ON RENEWED PATENT REFORM EFFORT ARE REVEALED?