PTAB Expanded Panels Impact Less Than 1% of All AIA Trials

Last week the Court of Appeals for the Federal Circuit (CAFC) issued its decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. (here)  The decision affirmed the USPTO’s Patent Trial & Appeal Board cancellation of certain claims of Nidec’s U.S. patent 7,626,349 (IPR2014-01121 & IPR2015-00762). In this regard, the opinion was rather unremarkable. Of particular interest to PTAB critics, however, was the Court’s discussion of the Board’s expanded panel practices in its concurring opinion.

Although conceding it had no impact on the outcome of the case, the concurrence took issue with the Board’s expansion of a rehearing panel for the stated purpose of reversing the earlier decision.  That is, in order to consistently treat questions of issue joinder under 35 U.S.C. § 315(c), the PTAB expanded a panel to include judges that had ruled differently on the same question of statutory interpretation. As a result, the expanded panel reversed the earlier decision and found issue joinder to be embraced by 315(c). The Federal Circuit signaled a strong distaste of such agency practices.

Critics were quick to lambaste the PTAB’s expanded panel process in Nidec as evidence of a crooked process and an anti-patent bias.  Of course, anyone that has followed this blog knows that to be false. Continue Reading PTAB Expanded Panels: Fact Check

Limitations of Patent Reissue

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same “public reliance” policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the “original patent” limitation of patent reissue. 

Antares Pharma, Inc. v. Medac Pharma Inc., (Fed. Cir. 2014), emphasized the original patent requirement of 35 U.S.C. § 251, namely:

Whenever any patent is, through error . . . ,deemed wholly or partly inoperative or invalid. . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall . . . reissue the patent for the invention disclosed in the original patent . . . .

35 U.S.C. § 251(a) (emphasis added).

In Antares, the defendant argued that the patent was impermissibly broadened by patent reissue as it had recaptured previously surrendered subject matter. In an attempt to side-step recapture, the patentee argued that the broadened subject matter was an overlooked aspect of the invention, and in fact, was an altogether different invention. This position was ultimately fatal under the “original patent” analysis, as the Court explained:
The original claims are significantly different in scope and coverage than the asserted claims. Claims 1–22 are focused on jet injectors, and every one of those claims contains the “jet injection” limitation. The asserted claims are focused on particular safety features and do not contain the jet injection limitation. Indeed, appellants themselves argue that the asserted reissue claims cover a different invention than that originally claimed * * * * The original specification here does not adequately disclose the later-claimed safety features to meet the [original patent standard]. 

Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device *****

These “suggest[ions]” or “indicat[ions]” of alternative inventions are not sufficient to satisfy the original patent requirement of § 251. * * * Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

(internal citations omitted)

With the emergence of PTAB patentability trials as a serious road block to patent assertion, patent reissue and patent reexamination are increasingly utilized to refine claims prior to assertion. Where broadening patent reissue is pursued, recapture concerns taken together with the original patent requirement can create quite the Catch-22.

Federal Circuit Unlikely to Open the Door to Discovery via Subpoena in Inter Partes Patent Reexamination

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Historically discovery has not been permitted in patent reexamination proceedings because, according to the USPTO, patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24. This argument makes perfect sense for ex parte patent reexamination, but perhaps less so for inter partes patent reexamination proceedings. Since much of the case law denying discovery in patent reexamination came about decades ago in the ex parte patent reexamination context, it is surprising that it took this long for the applicability of discovery in the inter partes context to make it up to the CAFC. (although the lack of discovery in inter partes patent reexamination has been recently emphasized in Lingamfelter v. Kappos)

Last week the Federal Circuit heard oral argument (here) in Abbott Laboratories v. Cordis Corp. (12-1244) on the issue of whether parties can subpoena documents or testimony in an inter partes patent reexamination proceeding before the USPTO under 35 U.S.C. § 24.   By way of background, §24 provides as follows:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena.

Cordis, the patent owner, sought subpoenas under §24 seeking discovery to rebut the declarations submitted by requesters Abbott Laboratories and Boston Scientific on the question of obviousness. Abbott filed a motion to quash the subpoenas, arguing among other things that 35 U.S.C. § 24 does not authorize the issuance of subpoenas because inter partes patent reexaminations are not “contested cases” within the meaning of the statute.

During the oral argument Abbott appeared to have the upper hand, and by a significant margin. Abbott and the amicus Solicitor pointed out that the legislative history of the America invents act (AIA) clearly explains that patent reexamination has been considered an “examinational” proceeding whereas the new post grant proceedings are adjudicative in nature. The AIA provides discovery for these new adjudicative proceedings because they are contested cases that are heard before Administrative Patent Judges of the Patent Trial & Appeal Board, whereas examinational proceedings like reissue and reexamination are essentially an extension of the examination phase and overseen by patent examiners. The Solicitor emphasized that the PTO has declined to promulgate rules allowing the issuance of subpoenas in reexaminations precisely because they are examination proceedings conducted before examiners and not contested cases held before administrative law judges. The Solicitor also made the interesting point that under Cordis’ broad definition of “contested case” even ex parte reexaminations would be subject to §24, which would create the anomalous result that requesters and patent owners would be entitled to obtain discovery via subpoena in ex parte reexaminations.

These arguments are consistent with the Board’s historic treatment of reexaminations as compared to patent interferences. Patent interferences have been conducted as contested cases in which limited discovery is permitted.

It is expected that the Federal Circuit will affirm the district court’s decision to quash the subpoena and decline to open the door to discovery via subpoena in reexamination proceedings. For the parties to the approximately 1,000 inter partes reexaminations still pending, discovery will likely be available only if the challenger seeks inter partes review or is able to pursue such in a parallel litigation.

Terminal Disclaimer Permanent Once Patent Issues

Back in January of 2011 I discussed the appeal decision in Ex parte Shunpei Yamazaki relative to patent reissue practice. In Yamazaki, a reissue patent application was filed shortly after issuance of U.S. Patent 6,180,991 for the purpose of withdrawing an earlier filed terminal disclaimer.

By way of background, the ‘991 patent issued on January 30, 2001 (based upon an application filed April 21, 1995). During the original prosecution, a terminal disclaimer was filed (November of 1996) to overcome a double patenting rejection. Thereafter, the claims subject to the earlier double patenting rejections were amended. Since the amended claims were believed to be distinct from those of the earlier patent, the Applicant petitioned to withdraw the earlier filed terminal disclaimer (April 1999). The petition remained pending for some 20+ months at the USPTO, but, the patent issued prior to any USPTO action on the petition filing. The petition was ultimately dismissed as moot once the ‘991 Patent issued.

Adding insult to injury, the USPTO explained in their belated petition decision that a terminal disclaimer could not be removed once a patent issues as patent reissue did not contemplate such mistakes as “error” under the reissue statute. In other words, even though the patent holder had disclaimed some 14 years of patent term by mistake, there was no mechanism to cure that mistake post issuance. Nevertheless, the Patentee filed a patent reissue application in an attempt to withdraw the terminal disclaimer.

In deciding the propriety of a patent reissue proceeding to remove a terminal disclaimer, an expanded panel of the BPAI (now PTAB) held that patent reissue could not reset the term of the original patent (which was set by the disclaimer). Interestingly, the BPAI decision also included concurring opinions that would have held differently had the patent not expired prior to completion of the reissue proceeding (December 2003).

Last week, the CAFC affirmed the USPTO, and made clear that patent reissue cannot withdraw a terminal disclaimer, even if the reissue proceeding were capable of concluding prior to expiration.

In their decision the CAFC explained (here):

[W]e recognize that the reissue statute “is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally.”In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). Yet “the remedial function of the statute is not without limits.” In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007). In this case, the various delays Yamazaki experienced in prosecuting his reissue application, while puzzling and undeniably unfortunate, had no effect on the eventual outcome because, as discussed, § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency. Cf. In re Orita, 550 F.2d 1277, 1280–81 (CCPA 1977) (rejecting a reissue application as seeking a correction that would have offended statutory requirements).

In footnote 3 of the opinion, the CAFC emphasizes the significant delays in both the patent reissue proceeding and original prosecution of this case. Unfortunately, patent reissue, while an important post grant tool for patentees, is still plagued to this day by unacceptable delays and maddening inefficiency.

September 15 Deadline Fast Approaching

Yesterday, the USPTO issued a notice entitled September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form (here) The notice is essentially a warning to practitioners that although September 15th is the official filing deadline for inter partes patent reexamination filings, the practical filing deadline is likely the week of September 4th.

The Notice explains that Requesters are advised to file any inter partes reexamination requests which they intend to file as soon as possible, in order to provide the United States Patent and Trademark Office (Office) with maximum time to: (i) Receive, process, and review such requests for their compliance with all the filing date requirements for inter partes reexamination; and (ii) notify the requester of any deficiencies in the request via a Notice of Failure to Comply with Inter Partes Reexamination Request Filing Requirements (Notice of Failure to Comply) while providing sufficient time for requester to submit a corrected/replacement request prior to September 16, 2012.

In other words, any issues of non-compliance must be corrected by September 15th. If the corrected/replacement request is not received by the Office as of September 15, 2012, the corrected/replacement request will not be accorded a filing date, even though the original request was timely received by the Office. This is so, regardless of when requester receives notification that the original request is not filing-date compliant.

Although not stated in the notice, paper filings should likely be avoided. This is because such filings also have to be scanned into the EFS system and, as a result, may introduce further delay.

CAFC Avoids Determining Propriety of Third Party Declaration Practice in Inter Partes Patent Reexamination

Yesterday, in Lingamfelter v. Kappos, (here) the CAFC decided that the Patentee had waived the right to contest the propriety of the third party declarations filed in their inter partes patent reexamination. (earlier post here)

The crux of the Patentee’s argument was that the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters—and “comments” as recited in the relevant statute cannot embrace testimonial “evidence” of declarants.35 U.S.C.§ 314(B)(2) The Patentee further decried the allegedly improper practice as unfair, pointing out that discovery is not permitted; thus there is no way to demonstrate the inaccuracy of the submitted evidence.

The CAFC seemed intrigued by the Patentee’s contentions during oral argument, but ultimately side stepped the issue finding the argument waived, explaining:

We need not address the merit of Lingamfelter’s arguments, however, because in our view, he has waived them. To begin with, Lingamfelter was too late in challenging the introduction of the evidence into the record. He did not object when third party requesters’ evidence was submitted to the examiner at the early stages of the inter partes proceedings (in July 2005), or when the first appeal from the examiner’s decision was presented to the Board (in December 2006). It was not until he elected to reopen the case before the examiner (in February 2010 and more than four years after the proceedings had begun) that he contended the examiner lacked authority to receive the contested evidence from third party requesters. Even at that late stage, however, Lingamfelter still did not sufficiently brief the issues that he raises in this appeal.

While a loss for this Patentee, it seems very likely that the issue will reemerge at the CAFC in the months ahead.

Examination Guidelines & Reexamination Determination Issued

Last week, the USPTO issued examination guidelines in light of the ruling in Mayo v. Prometheus this past March. The guidelines are entitled “2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature. ” (here) The notice explains that the new guidelines will primarily apply to Art Unit 1600, and supersede the initial memo issued by the USPTO to the Examining Corps. on March 21, 2012.

As a reminder, this notice is directed to patent examination, not reexamination. Patentable subject matter issues may not serve as a basis for patent reexamination. There is currently no vehicle (at least until September 16, 2012) for a patent challenger to pursue 101 arguments before the USPTO. This is because patent reexamination is initially limited to patents and printed publications only. As discussed this past May, submitting such challenges in patent reexamination is often litigation inspired, but not without risk of collateral damage to other arguments.  In the request filed last May, all of the proposed SNQs pertaining to the intervening art theory were denied, even those that did not rely upon the 101 theory. In a simple dismissal of the 10 page effort of the Request, the Office explained:


Fortunately for the Requester, SNQs that did include intervening prior art were accepted by the Office. Order in 90/011,276 (here)

Patentable Subject Matter Challenge Advanced in Patent Reexamination

This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus. The decision held that certain patents of Prometheus Laboratories were directed to non-statutory subject matter. Specifically, the Court found the Prometheus patents, claiming methods of administering a blood test to calibrate necessary drug dosages in patients suffering from autoimmune diseases, to be directed to laws of nature.

The decision was an important one for the bio/pharma community, especially as it relates to the 101 analysis currently before the CAFC in the Myriad gene patent dispute.

However, when it comes to such patentable subject matter challenges under 35 U.S.C. § 101, there is currently no vehicle for a patent challenger to pursue such arguments before the USPTO. This is because patent reexamination is limited to patents and printed publications. Yet, challengers will occassionally test the bounds of the USPTO’s patience in this regard by infusing requests with extraneous commentary. 

Last Monday, Merial Ltd, the animal health division of Sanofi Aventis, filed a request for ex parte reexamination of Genetic Technologies U.S. Patent 5,612,179. (90/012,276). The patent is directed to genetic tests for DNA markers found in cattle.

The request cites art that is intervening with respect to the effective filing date (i.e., earliest filed application) and the filing date of the underlying patent application that matured into the ‘179 Patent. In other words, if the claims of the ‘179 Patent are not supported by the earliest filed application consistent with the requirements of 35 U.S.C. § 112, the cited, intervening art, is properly considered prior art against the claims of the patent. (see earlier post on the filing strategy here and here)

Generally speaking, when asserting such an intervening art rejection, declaration evidence is typically advanced to demonstrate the lack of support in a parent application for a certain claimed feature. However, rather than take the traditional route, Merial has attempted to piggyback off of the Prometheus ruling, arguing:


The filing (here) continues by stating that the ‘179 Patent claims are “akin to the claims in Prometheus, explaining:101a

As made clear in MPEP 2258 (B), issues relating to 35 U.S.C. § 101 are not considered in patent reexamination. While Merial is not advancing a 101 rejection per se, the USPTO would have to agree that the claims of the ‘179 patent fail to meet 101 in order to reexamine them in the manner requested; this is not going to happen. Instead the 101 aspect of the request will simply be ignored.

So, aside from inexperience, why would a Requester go through the trouble of submitting all of this extraneous 101 discussion? 

Often times, reexamination requests will include litigation inspired theories that Requesters are well aware will be of no consequence to the USPTO. Instead, such discussions are typically provided for the benefit of a judge in the parallel proceeding (i.e., where the filing is introduced as a status update or the like); perhaps such is the case here.  Merial and Genetic Technologies are currently litigating the patent in Delaware. In some circumstances, filings of this ilk are referred to the Office of Patent Legal Administration (OPLA) for vacating of the filing date. (such as where inequitable conduct is alleged. See 95/001,259 (2/12/10)) Thus, such filing strategies are not without risk, and are best avoided.

Here, the 101 discussion is quite distracting, spanning a significant portion of the early discussion. Likewise, as Merial’s other arguments with respect to the 112 support are not based on declaration evidence, but just attorney argument, the request strategy could very well backfire by dooming the whole request to an outright denial.

As a result of the America Invents Act, challengers will be able to properly allege 101 deficiencies via a Post Grant Review (PGR), or Transitional Program for Covered Business Method Patents (TCCBMP) on or after September 16, 2012; until then….don’t try this at home.

Can Declaration Evidence be Considered “Written Comments”

Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent reexamination creates a limited prosecution window relative to the prosecution of patent applications. For this reason, submission of declaration evidence by Patentees under 37 CFR § 1.131 and/or 37 CFR § 1.132 is fairly routine in patent reexamination proceedings.

For Requesters, it is critical to respond to the declaration evidence of the Patentee in kind, especially as the Requester will be estopped from advancing failed arguments of the IPX in a district court or subsequent USPTO proceeding.

Despite this well established, declaration practice in IPX, a recent reexamination dispute before the CAFC questions the statutory propriety of Requester declaration submissions.

The CAFC has recently heard arguments in the appeal of Lingamfelter v. Kappos, which is an appeal of a Board of Patent Appeals and Interferences (BPAI) ruling that invalidated a patent related to beverage packaging (6,789,673). The reexamination was requested by two packaging suppliers of Coca-Cola and Miller Brewing Co., which the Patentee sued for infringement.

The crux of the Patentee’s argument is that the Requesters improperly introduced declarations of Coca-Cola and Miller employees addressing the difference between the claimed invention and the prior art. Based in part on that evidence, the examiner rejected several claims as anticipated or obvious in light of the prior art, a finding that was affirmed by the BPAI.

Specifically, the Patentee challenges the acceptance of evidence from the Requesters, contending that the USPTO exceeded its authority by allowing the Requesters (suppliers, MeadWestvaco Packaging Systems LLC and Graphic Packaging International Inc.), to submit declaration evidence from Coca-Cola and Miller employees. According to the Patentee, while the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters, “comments” as recited in the relevant statute, does not embrace testimonial “evidence” of declarants. As no discovery is permitted in IPX proceedings, the Patentee argues that he is unable to demonstrate the inaccuracy of the submitted evidence (and testing).

The relevant portion of 35 U.S.C. 314 (B)(2) provides:

(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.

(emphasis added)

The above argument did not appear to be given much in the way of serious consideration by either the USPTO or third party in their responsive briefs. (here and here). Yet surprisingly, the CAFC appeared to receive this argument quite favorably during the oral hearing. (here) The Court also seemed persuaded by the fact that the new statutes outlining Inter Partes Review (IPR) specifically distinguishes between “evidence” and “comments” and also provides for limited discovery. (as perhaps an indication that Congress was intending to address shortcomings of IPX)

Moreover, the Court found that there may not be Chevron deference accorded to the PTO’s proferred definition of “comments” as it did not appear the the agency had ever interpreted “comments” previously. Likewise, neither the PTO nor the Requesters had presented any evidence as to the practical realities of current declaration practice to exhibit such an agency supported definition of “comments.”

Should the CAFC reverse the BPAI on this issue it will create quite a mess for the USPTO….stay tuned.

Reexamination Certificate Printing Process Streamlined

A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate. The certificate functions to communicate the results of the proceeding to the public (claim changes/cancellations, etc.)

Historically, upon issuance of the NIRC the USPTO would hand the file off to a government printing contractor located in Pennsylvania for printing of the reexamination certificate. Once in the hands of the printing contractor, the file would be reviewed to ensure completeness (and was often times shuffled back to the agency for administrative oversights, largely related to IDS filings). Thus, from the time a NIRC is issued, it is not uncommon for a certificate print cycle to span 4-6 months in duration. This delay was more than just a minor inconvenience for Patentees as amended/new claims do not legally exist until printed. In other words, potential infringement damages for such amended/new claims are lost to bureaucratic inefficiency even though the substantive aspect of the reexamination proceeding is effectively finished.

The good news is that the USPTO has now addressed the printing delay and has drastically reduced the duration of the print cycle in recent weeks. During the December 2010 to January 2011 time frame, the USPTO issued 78 reexamination certificates. For these certificates the average printing cycle spanned 120 days. Since that time, the USPTO made changes to the volume of data that is to be printed on a certificate. As a result of the changes implemented this past November the printing cycle has been reduced to 47 days. That is to say, from November 2011 to December 2011 the USPTO issued 70 certificates in an average time of 47 days, including one which issued in only 33 days.

The improvement is charted below (Click to Enlarge):

certificate info

The USPTO Office of Data Management (ODM) has provided me with the following data:

RX-NIRC Dates of December 2010 through January 7, 2011 (duration 6 weeks):
Total volume – 78
Issued on average in 120.6 days
Issue dates ranged from February 22nd to May 24th
40% of these reexams were well over 120 days

RX-NIRC Dates of September 2011 and October 2011 (duration 6 weeks):
Total volume – 102
Issued on average in 52.9 days
Issue dates ranged from November 1st to December 6th
Less than 8% of these reexams were over 100 days.

RX-NIRC Dates of November 2011 and December 2011 (duration 6 weeks):
Total volume – 70
Issued on average in 47.9 days
Issue dates ranged from December 13th to January 31st
0 reexams were over 100 days
1 reexam issued in 33 days

The time reduction was achieved by reducing the amount of data printed on the reexamination certificate. No longer will the certificate list the significant volumes of prior art submitted to the Office during patent reexamination proceedings, instead, this information will now reside in PAIR as a new “tab” of the interface.

The re-engineering of the print cycle is a much welcomed change.

Going forward, it is expected that the USPTO will continue efforts to streamline patent reexamination proceedings. For example, during the recent PLI 2012 Post Grant Patent Practice Program the director of the Central Reexamination Unit (CRU) commented that the previous streamline initiatives were placed on the back burner due to the monumental effort of the Agency to implement the various provisions of the America Invents Act. However, now that the bulk of the AIA rule making effort is complete, the Office expects to get back to their previously proposed streamline initiatives.

Stay tuned!