Inter Partes Reexamination

Subscribe to Inter Partes Reexamination via RSS

Inter Partes Patent Reexamination is Not Always the Best Choice

In the case of Inventio AG v. Otis Elevator Co. (SDNY), the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination of the USPTO seemingly demonstrated the potential invalidity of the subject patent. Interestingly, this type of strategic, post-trial benefit of a concurrent patent reexamination is not available if the parallel patent reexamination were an inter partes patent reexamination.

That is to say, in considering the choice between ex parte and/or inter partes patent reexamination, post trial, or late stage litigation strategies must take into account the unique estoppel provisions of inter partes patent reexamination.
Continue Reading Limited Patent Reexamination Choices for Late Stage Litigants

Is Appeal Pendency Really Reflected in USPTO Pendency Figures?

In considering whether or not to stay a parallel litigation in view of a pending patent reexamination the court will consider several factors. One of the more hotly contested factors is whether the stay will unduly prejudice, or present a clear tactical disadvantage to, the non-moving party.

While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. For example, it has been argued, successfully at times, that a delay that is not merely lengthy, but potentially indefinite is prejudicial to the non-moving party. For this reason, especially when it comes to inter partes patent reexamination, the average length of the proceeding can be instructive to the Court.

Hoping to convince the Court of a prejudicial delay, Patentees will argue that inter partes patent reexamination takes on the order of 5-7 years to complete through appeal. Defendants, on the other hand, will cite to published USPTO statistics that indicate inter partes patent reexamination pendency to be an average of 36 months, including appeal. 

So, which party is manipulating the truth?
Continue Reading The Historical Skew of Inter Partes Patent Reexamination Pendency Statistics

Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination?

On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. 2008-1511.  The majority opinion authored by Chief Judge Randall Rader established a single new standard for determining materiality in inequitable conduct cases. This new “but for” standard defines material information as any non-cumulative information which, had it been disclosed prior to patent issuance, would have prevented the patent from issuing.

Unlike the prior standard used in determining materiality of undisclosed information, the new standard assesses materiality on a preponderance of evidence burden of proof standard giving the patent claims their broadest reasonable construction in light of and consistent with the supporting patent specification. Presumably, because the majority opinion rejected the applicability of the USPTO’s materiality standard under 37 CFR § 1.56(b)(1), the new “but for” standard will take into account any rebuttable evidence that is proffered by the patent owner such as antedating non-statutory bar prior art and objective indicia of non-obviousness, irrespective of the fact that none of such rebuttal evidence was ever submitted to the USPTO for consideration prior to patent issuance.

A consequence of the new “but for” test for materiality is that, at least for those filings that include art forming the basis of an inequitable conduct defense to infringement, inter partes patent reexamination is now the more attractive option. …
Continue Reading Therasense Decision & Inter Partes Patent Reexamination

Inter Partes Patent Reexamination Petition Practice May Back Fire on Unwary PatenteesIn inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis. One of the more common petitions in inter partes patent reexamination is a petition for waiver of the page limit requirement. That is to say, submissions in inter partes patent reexamination are limited to 50 pages of substantive comment. (37 C.F.R. § 1.943). As it is not uncommon for initial requests for inter partes patent reexamination to total hundreds of pages, Patentees will often seek waiver of the page limit in order to respond to all issues. The waiver of Rule 943 is sought via petition (37 C.F.R. § 1.183).Of course, at the time of petitioning, the patentee is by definition submitting a response that exceeds the 50 page limit. In other words, the “response” as submitted does not comport with the statutory definition unless, and until, the petition is granted. As recently demonstrated in 95/001,206 (decision here) such a filing will effectively delay the time for a third party response by several months.In the ‘206 case, a patentee response was filed on June 7, 2010 along with a petition to waive the page limit requirement. The third party did not file a response by July 7, 2010. The patentee petition was granted on August 11, 2010. In the petition, the USPTO noted that a third party response was due 30 days from the date of the petition decision; thereafter the third party filed their response (some 2 months after July 7, 2010). Subsequently, the patentee filed a further petition seeking to strike the third party response as untimely, in the decision linked above, the USPTO explained:Certainly, it is not possible to adhere to the page limit requirement in all cases. However, patentees should consider the impact of filing a response that exceeds the page limit together with an appropriate petition. That is to say, the cost of additional pages is effectively an extension of time that would be otherwise unattainable to the third par

In inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.

On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.

As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis.

Continue Reading Why Patent Owners Should Consider Operating Within Page Limits

Petition or Appeal?–Pursuit of SNQ Denial at the USPTOWhen pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because a third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds. As explained by an expanded panel of the Board of Patent Appeals & Interferences (BPAI) yesterday in Belkin International et al., v. Optimumpath LLC, the denial of an SNQ in inter partes patent reexamination is  petitionable, not appealable. In Belkin U.S. Patent 7,035,281 was reexamined (95/001,089). The request was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.The denial of the SNQs applied to claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit. Upon reconsideration, the Director refused to reverse the examiner. During prosecution, the rejection of claims 1-3 and 8-10 was later withdrawn by the examiner. Thereafter, the third party appealed the withdrawn rejection and the denial of the SNQs. On appeal, the BPAI affirmed the examiner’s decision to withdraw the rejection and confirm the patentability of claims 1-3 and 8-10. As to the appeal of the denied SNQs, the BPAI explained that such issues may not be appealed to the Board. . . . 35 U.S.C. § 312 states that the Director makes such determinations (of whether a substantial new question of patentability exists) and that the determination “by the Director . . . shall be final and non-appealable.” Only when the Director makes the determination that a substantial new question of patentabilityaffecting a claim of a patent is raised (i.e., that a substantial new question of patentability exists for a particular claim) shall an inter partes reexamination of the claim(s) in question be performed for resolution of the question (35 U.S.C. § 313). Therefore, on the other hand, when the Director makes a determination that a substantial new question of patentability affecting a particular claim is not raised, the Director does not order inter partes reexamination of the patent with respect to those claims. Under those circumstances, no reexamination is performed with respect to those proposed substantial new questions of patentability. Also, as pointed out above, the Director’s determination that no substantial new question of patentability was established for any particular claim(s) is final and non-appealable (35 U.S.C. § 312(c)).Since, under 35 U.S.C. § 312 and 35 U.S.C. § 313, reexamination of the patent claims in question cannot proceed when the Director makes a determination that a substantial new question of patentability has not been raised for those claims and that the Director’s determination is non-appealable, no final decision, whether favorable or unfavorable, can be rendered pertaining to those claims. Under 35 U.S.C. § 315(b), a third-party requester may appeal with respect to any “final decision favorable to the patentability” of disputed claims. However, as described above, if the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)The decision continues on to explain that the denial of SNQs is propoerly pursued by petition to the Director (which Belkin filed to no avail; 37 C.F.R. § 1.927). Note that had an SNQ been found but the corresponding rejections not adopted, appeal of non-adopted rejections would have been appropriate.Of course, a patent owner’s seeking to reverse an accepted SNQ in ex parte patent reexamination may pursue the matter to the BPAI

When pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because a third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).

Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.

But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds.

Continue Reading Pursuing Denied SNQs in Inter Partes Patent Reexamination

First CAFC Review of Inter Partes Patent ReexaminationIn inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. (previous discussion here) The BPAI determined that the prior art reference of record did not show a data card containing any type of aperture, but secondary references did.  Nevertheless, the BPAI determiend that it would not be obvious to modify the primary references to include one of the circular apertures of the secondary references.  The Board explained that obviousness of a design patent requires an analysis of whether the design would have been obvious to a designer of ordinary skill who designs articles of the type involved and that there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.  Vanguard then took the fight on to the CAFC in Vanguard Identification Systems Inc. v. David J. Kappos et al.Unfortunately for Vanguard, the reversal of the BPAI was affirmed without comment (Rule 36, here). Clearly, that not all inter partes patent reexaminations end in defeat for Patentees. Interestingly, this is the first inter partes patent reexamination to make it through the full process (i.e., from initial filing to CAFC appeal) some 11 years after enactment of the inter partes patent reexamination statutes. Also interesting in that the USPTO was supporting the patentability determination here, as opposed to their usual ro

In inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. (previous discussion here) 

The BPAI determined that the prior art reference of record did not show a data card containing any type of aperture, but secondary references did.  Nevertheless, the BPAI determiend that it would not be obvious to modify the primary references to include one of the circular apertures of the secondary references.  …
Continue Reading Hole in Patent Reexamination Strategy Leads to CAFC Defeat

Golf Ball Brawl Heard at BPAIYesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.So, yesterday, the Board learned all about Acushnet, a company known for their balls.The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. It was also argued that since a Markman Order on the meaning of the claim terms had been considered by the BPAI that this claim interpretation should be controlling on the USPTO. Callaway also referenced secondary indicia of non-obviousness that pointed to the sales success of the ProV1 golf balls.Callaway emphasized to the Board that the claims reciting a polyurethane embodiment were of primary importance. When prompted by the Board as to whether or not Callaway was intending to waive the claims not including this feature, Callaway agreed to waive those claims on the spot. I am guessing the Board probably would have preferred that happen before reading all of the briefs and associated examiner positions.  Strange.In rebuttal, Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims. Acushnet then explained that they (Titleist) sell more balls than anyone else because they are the market leader and that the Callaway evidence of secondary considerations had no meaningful nexus to the patented claims.The dispute will inevitably head on to the CAFC no matter the decision of the Board. If the claims ultimately fall at the CAFC (my guess), I will be very interested in the outcome of the breach of contract issue. Can Acushent really breach the contract in view of CAFC indications that a patent is “void ab initio” when found unpatentable as a result of reexamination. Standard Havens Products Inc. v. Gencor Industries Inc., 996 F.2d 1236 (Fed. Cir. 1993) (per curiam). In other words, if the patent never existed….what about that contra

Yesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.

In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.

So, yesterday, the Board learned all about Acushnet, a company known for their balls.
Continue Reading Callaway Golf’s Last Stand in Patent Reexamination

Getting Your Case Stayed By Stipulated AccelerationMany inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?37 CFR 1.953(b) provides for an expedited Right of Appeal Notice (RAN). At any time after the Patentee’s response to the initial Office action on the merits in an inter partes patent reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a RAN. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding, and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a RAN limited to the identified issues shall be issued. See also MPEP § 2673.02 (II).In other words, significant portions of inter partes patent reexamination prosecution can be compacted, by agreement. Of course, litigating parties never agree on anything, which is why this rule is never used. But, if a defendant were to indicate in their motion for stay that they would stipulate to following this procedure, they would in fact be offering to accelerate the proceeding. In this way, the defendant can take some of the “bite” out of the Patentee’s prejudice (i.e., time delay) argument.In practice very few expedited RANs are sought (I’m not aware of a single one), thus contributing to the prolongation of the inter partes patent reexamination prosecution phase (appeal being a separate phase). If the patent litigation is not stayed and the trial is imminent or underway, the patent owner has little incentive to expedite the inter partes reexamination proceedings. In such circumstances, particularly where the patent owner has not canceled or amended claims for fear of intervening rights applying, expediting the right of appeal where original patent claims are rejected has no benefit. Even where all claims are confirmed or allowed, the patent owner has little incentive to expedite the right of appeal notice to permit the third party requesters to get their appeals heard promptly.On the other hand, where the concurrent patent litigation is stayed pending the outcome of the inter partes reexamination proceeding, the patent owner may want to expedite the right of appeal notice, especially where all claims are confirmed or allowed. In such circumstance, the third party requesters may lack an incentive to seek an expedited right of appeal notice because of fear of the estoppel provisions of 35 U.S.C. § 315(c). Thus, agreeing to fast track the case to appeal is not without risk for either party.Finally, where there are circumstances that may warrant the filing of an expedited right of appeal notice, such as where a parallel litigation is stayed, the USPTO should consider a sua sponte waiver of 37 C.F.R. 1.955. This would permit a joint interview for the purpose of reaching agreement on the issues appropriate for final action and identification of all of the appealable issues. Such would advance the inetrests of the special dispatch requirements of 35 U.S.C. § 314(c). Such a procedure would be in a similiar vein to that of the pilot program seeking waiver of the Patent Owner Statement in ex parte patent reexaminati

Many inter partes patent reexaminations are conducted concurrent to district court litigation (USPTO statistics indicating 70% ). At one point or another, the defendant(s) will seek a stay of the parallel litigation arguing that the inter partes patent reexamination will reduce issues for trial based upon familiar factors. Of course, in arguing against the stay, the Patentee will cite to the statistics indicating that inter partes patent reexamination take years to conclude through appeal.

So, since everyone knows the game, why don’t defendants show some creativity and take matters into their own hands? In other words, there is a rule already in existence by which participants of an inter partes patent reexamination can accelerate the proceeding THEMSELVES. So, why isn’t anyone using it?
Continue Reading Fast Tracking Inter Partes Patent Reexamination by Agreement

Cellectis Patent Surrendered by Operation of Inter Partes Reexamination Pendency

Last week, the litigation between Cellectis S.A. and Precision Biosciences Inc., (E.D. N.C) No: 5.08-CV-00119-H was stayed pending the outcome of inter partes patent reexamination proceedings involving the patents at issue in the litigation, namely, U.S. Patents 6,610,545 and 7,309,605. In the decision to stay the case, the same familiar factors were analyzed. Of particular interest is the court’s discussion of the “undue prejudice” factor.

In discussing the undue prejudice factor, the court noted that both of the patents at issue will expire in May of 2012. By pointing this out, the court surmised that should the case be stayed, any improper shifting of market share (due to infringement) would be transient at best in view of the relatively imminent patent expiration. Thus, the court found that the balance of equities favored staying the case. With regard to patent expiration, the court explained:

[I]t is uncertain whether the PTO’s reexamination will be completed before the patents expire and highly unlikely that any appeal of the PTO’s decision will be resolved prior to the expiration of the patents.

In pointing out this fact, the court unknowingly emphasized a sad reality for Cellectis. By amending the ‘605 Patent, Cellectis has effectively surrendered this patent by operation of USPTO pendency.
Continue Reading Death by Amendment, Practical Impacts of Patent Reexamination Pendency

copycatGEOSPAN Corporation filed a lawsuit in March 2008 in the United States District Court for the District of Minnesota, alleging that Pictometry infringed  GEOSPAN’s U.S. Patent No. 5,633,946.

In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)

In its request, GEOSPAN set forth substantial new questions of patentability based upon  a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.

On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting  the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the  inventors’ work where none of the inventors is an author of the printed publication used to reject the claims. 
Continue Reading Reporter’s Description of Invention at Issue in Patent Reexamination