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Interference Model to Control Petition Explosion & Manage Filings

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.

To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305)  was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.

My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that…

Continue Reading Streamlining Petition Practice Management in Inter Partes Patent Reexamination

Rare Victory in Patent Reexamination

Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. A common form of declaration evidence introduced in patent reexamination, although only rarely successful, attempts to identify objective evidence of non-obviousness. MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As discussed in past posts, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively identify a nexus between this evidence and the patented claims. Occasionally, however, evidence of secondary indicia of non-obviousness can be the difference between winning and losing.
Continue Reading Secondary Considerations Rebut Obviousness Finding

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

June Meeting to Consider Proposed ChangesAs discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).A short overview of each proposal is detailed next:Ex Parte & Inter Partes ProposalsStandardization of Patent Reexamination Request Formats (Proposals 1-2)Proposal 1 would require, as part of the presentation of the SNQ, an explanation of how the SNQ is different from issues previously considered by the Office. While an SNQ discussion should always explain how a technological teaching is “new,” the USPTO finds that this practice inconsistent. As such, Proposal 1 seems more of an attempt to codify a current best practice.  Proposal 2 also appears to be an attempt to codify a current best practice of identifying all limitations of a claim. Interestingly, the proposal states that this can be done via claim chart or narrative, but not both.SNQ Management (Proposals 3-4)Proposal 3 would allow examiners to more readily group proposed SNQs as cumulative with respect to others unless Requesters explain why seemingly cumulative SNQs are unique. If an examiner finds cumulative SNQs, one will be selected as representative of the group.  Proposal 4 outlines the manner by which representative rejections are grouped by an examiner, and how they are appealed together with all adopted rejections. The selection of a representative rejection is not petitionable, however, Inter Partes Requesters may comment on the selection of a particular rejection (more on that below)Limiting Requester Declaration Evidence to Rebuttal (Proposal 5)Proposal 5  would require most third party declaration evidence to be submitted together with the request. Later submissions would be limited to rebuttal of points raised by the examiner or patent owner. Any submission of such evidence after the request stage would require a statement as to how the evidence is limited to issues newly raised.Limiting Patent Owner Amendments to First Action (Proposal 6)Proposal 6 arguably reflects current practice. Namely, amendments must be submitted before a final rejection unless directed to a matter of form, claim cancellation or the like. This proposal alludes to the fact that Patentees refusing to waive the patent owner statement may surrender their right to amend altogether. (more on the change to the pilot program below)Requiring Statement of Compliance with 35 U.S.C. § 305 (Proposal 7)Proposal 7would require all amendments to be accompanied by a statement explaining how the change is directed to overcoming an SNQ. The concern here is that changes may be made to claims for reasons unrelated to patentability, such as claim construction. Of course, such changes are already improper based upon 35 U.S.C. § 305. This statement would be an additional safeguard for defendants seeking patent reexamination parallel to litigation claim construction proceedings. (i.e., inequitable conduct opportunity)Clarify Petition Practice (Proposal 8)Perhaps the most immediately helpful aspect of the various proposals is provided below. The chart below clearly explains when it is appropriate to oppose the most common patent reexamination petitions.            Examples of Petitions Filed in Reexamination ProceedingsRelief requestedPetitionable?Opposable?Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648)Yes—1.181No.Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646)Yes—1.181Yes.Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357)No (but see 75 FR 36357in ex parte reexam)No.Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915Yes—1.181Yes.Extension of time to respond to an Office action by Patent Owner in ex parte reexamYes—1.550(c)No.Extension of time to respond to an Office action by Patent Owner in inter partes reexamYes—1.956No.Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2))NoNo.Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43)Yes—1.550(c)No.Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66)Yes—1.183No.Striking another party’s improper paper (or portion thereof) from the fileYes—1.181Yes.Protection of proprietary information being submitted under sealYes—1.59(b)Yes.Waiver of page or word limit requirementYes—1.183No.Review of refusal to enter amendmentYes—1.181Yes.Withdrawal of final Office actionYes—1.181Yes.Revival of terminated proceeding based on Patent Owner’s “unavoidable” delay and acceptance of late paperYes—1.137(a)No.Revival of terminated proceeding based on Patent Owner’s “unintentional” delay and acceptance of late paperYes—1.137(b)No.For jurisdiction to be transferred to the Office of Patent Legal AdministrationNoNo.Suspend inter partes reexam for “good cause” under 35 USC 314(c)Yes—1.182Yes.Terminate inter partes reexam based on estoppel under 35 USC 317(b)Yes—1.182Yes.Ex Parte Proposals OnlyMake Pilot Program for Waiver of Patent Owner Statement Permanent (Proposal 1)Proposal 1  would permanently adopt the Program for Waiver in ex parte patent reexamination proceedings.Allow for First Action Final for Patentees Refusing to Waive Statement (Proposal 2)Proposal 2 recognizes that although the Waiver Program provides a great opportunity for the Office to reduce pendency, to date, Patentees are not cooperating. (see my most recent case study on this issue here). This rule would essentially punish those Patentees that do not agree to the waiver, by issuing a first action final. If the Patentee agrees to waiver, a first action would issue together with the grant, otherwise, a provisional first action is issued with the grant, and after the statement period, a final action is issued.Inter Partes Proposals OnlyAbility to Dispute Representative SNQ Finding (Proposal 1)Proposal 1 would allow a Requester to present arguments directed to those rejections held in abeyance as cumulative. (to either the examiner or Board)Consolidate ACP/RAN Practice to More Traditional Final Rejection (Proposal 2)Proposal 2 would eliminate the ACP/RAN practice and replace it with a final office action. This proposal would require amendments to 37 C.F.R. §§ 1.949-1.953. (This change would shave considerable time off of pendency figures).Eliminate Cross Appeal Practice (Proposal 3)Proposal 3 would no longer allow third parties to appeal those rejections that are not adopted in cases where the claims stand rejected on other grounds. The PTO points out that this change would be consistent with appellate practice of the district courts.OtherIn addition to these proposals, the USPTO seeks feedback on the following general propositions:1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?3. Should the USPTO revise its existing page or word limits in inter partes reexamination following the request?4. Should the USPTO place any limitation or criteria on the addition of new claims by a Patent Owner in reexamination? If so, what kind of limitation or criteria?5. Should the USPTO change its interpretation of ‘‘a substantial new question of patentability’’ to require something more than ‘‘a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable’’? See MPEP §§ 2242, 2642. If so, how should it be interpreted?6. How much time should Patent Owners and Third Party Requesters ordinarily be given to submit a statement, response, or appeal where the time for filing the statement, response, or appeal is set by the USPTO rather than by statute?7. Under what conditions should the USPTO grant a Patent Owner’s request for an extension of time under 37 CFR 1.550(c) or 1.956, both of which provide that extensions of time may only be granted for ‘‘sufficient cause and for a reasonable time specified’’? 8. Should the USPTO require that any information disclosure statement (IDS) filed by a Patent Owner in a reexamination comply with provisions analogous to 37 CFR 1.97 and 1.98, and further require that any IDS filed after a Notice of Intent to Issue a Reexamination Certificate (NIRC) or notice of appeal be accompanied by:     (1) an explanation of why the information submitted could not have been submitted earlier, and (2) an explanation of the relevance of the information with regard to the claimed invention? 9. Under what conditions should a reexamination proceeding be merged with another reexamination or reissue proceeding? 10. What relief can and should be given to a Third Party Requester that shows that it did not receive a Patent Owner’s statement or response within a certain number of days after the date listed on the Patent Owner’s certificate of service? How many days and what kind of showing should be required? 11. Should the USPTO encourage and/or require that all correspondence in reexamination proceedings be conducted electronically (e.g., e-filing parties’ documents, e-mailing notices of Office actions and certificates)? 12. Should reexamination proceedings remain with the Board in cases where the Board has entered a new ground of rejection on appeal and the Patent Owner seeks to introduce new evidence and amendments? In particular, is it more efficient for three administrative patent judges or a single examiner to decide issues involving new evidence and amendments? 13. What other changes can and should the USPTO make in order to streamline reexamination proceedings?I will explore many of these issues in more detail in the weeks to come. Also, as I will be coordinating the ABA response to these proposals, I welcome any and all comments. (for those preferring private comment smckeown@oblon.com

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).

A short overview of each proposal is detailed next:…
Continue Reading USPTO Proposes Overhaul to Patent Reexamination Proceedings

In Re Tanaka Decision on “Bullet Claims” Reversed at CAFCToday, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.In their decision to reverse the Board, the court explained:As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be “wholly or partly inoperative or invalid.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989). Second, “the defective, inoperative, or invalid patent” must have arisen “through error without deceptive intent.” Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent. . . . Judge Giles S. Rich wrote the Handel decision reversing the Board’s rejection of the reissue application. He explained that the reissue claims involved subject matter disclosed in the specification and thus were properly directed to “the invention disclosed in the original patent.” Id. at 944. In a footnote, Judge Rich remarked that “[t]he term ‘inoperative’ has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention.” Id. at 945 n.2 (quoting McGrady, Patent Office Practice 309 (4th ed. 1959)). Judge Rich added that because the original patent claims were all retained in the reissue application the “term ‘less’ [in Handel’s reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims.” Id. at 946 n.2 (emphasis in original). Thus “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” Id. While this court has since characterized that view as dictum, it has not departed from it. . . . Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observa-tion—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.In the dissent, Judge Dyk explains that where all the original claims are still present in the patent reissue proceeding, the addition of narrower dependent claims is a surrender of nothing (i.e., statute requires surrender of original patent). He also notes that the cases relied upon by the majority are distinguishable on their facts.In essence Judge Dyk seems to be saying that where a patent reissue application seeks only new, dependent claims, it is essentially a continuation application by proxy. I think the USPTO would agree. Certainly, the anti-continuation lobby present at the USPTO back in 2008-2009 spawned quite a few initiatives to combat continuation filings. Today’s decision is a very positive development for Patente

Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.…

Continue Reading CAFC Reverses USPTO on Important Question of Patent Reissue

USPTO Vacates Reexamination Certificate Cancelling All Claims?Typically, a patent reexamination proceeding is terminated after a patentability determination of the USPTO. Termination may occur during the prosecution phase or after the appeal phase is concluded. Occasionally, a patent reexamination is terminated based upon a failure of a Patentee to present timely filings.  Once terminated, a certificate is published informing the public of the outcome of the patent reexamination proceeding (i.e., claim changes/cancellations).For those terminations caused by the failure to present a timely filing, such as an interview summary (ex parte) or a response to an office action, it is possible to petition under 37 CFR § 1.137(b) to have the late papers entered and the termination vacated; thereafter, the patent reexamination proceeding continues. But what if the petition is not filed until months after the initial termination, and after the printing of a certificate informing the public that all claims of the patent have been cancelled?The answer might surprise you.In Extreme Networks, Inc. v. Enterasys Networks, Inc., (WDWI), after an adverse jury verdict, defendant Enterasys sought ex parte patent reexamination of the Extreme Network patents at issue. The verdict found Enterasys liable for $200k in damages, but more importantly, an injunction was entered against the defendant (now stayed).In April of 2010, first office actions were issued in two of the ex parte patent reexaminations (90/010,433 & 90/010,432) . In June of 2010, petitions for extension of time were filed by Extreme to extend the due date for filing the responses; these petitions were denied. In July of 2010, both reexaminations were terminated as a response was never filed to the April office actions. 4 months later, reexamination certificates were printed cancelling all claims of the respective patents.Relying on the printed certificates, Enterasys motioned for the court to dissolve the injunction. Shortly thereafter, Extreme petitioned the USPTO to vacate the terminated reexamination proceedings, despite the fact that the certificates had already printed. Extreme claimed that the months of delay in filing their response was unintentional; curiously, the USPTO granted the petitions.Enterasys then filed a new motion with the court alleging that the petition filing constituted clear inequitable conduct (as the decision not to file a response after the extension denial was intentional), and that the injunction threat was no longer equitable. The court denied the relief requested by Enterasys, but continued the stay until the conclusion of the patent reexaminations (decision here)Petitions to vacate a terminated patent reexamination are not uncommon. Yet, here, the reexaminations were not only terminated, they were concluded, and resulted in printed certificates. Only after the printing of the certificates were the petitions submitted to the office. It is unclear how the USPTO can justify jurisdiction over such concluded proceedings. Indeed, 37 CFR  § 1.570(d) provides:If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue applications or reexamination requests relating thereto. (emphasis added)Here the office decision vacated the reexamination certificate that cancelled all claims, and allowed further proceedings. This action seems directly at odds with 1.570(d).Moreover, even assuming such vacatur were proper on another basis, public policy would seem to favor reliance upon printed reexamination certificates. Certainly practitioners should be allowed to correct simple mistakes, but with so many patent reexaminations being related to high profile litigations (as was the case here) it should not take 6 months to file a simple petition…..just my two cents. Very, very strange case.This case was brought to my attention by the great Docket Navigator.

Typically, a patent reexamination proceeding is terminated after a patentability determination of the USPTO. Termination may occur during the prosecution phase or after the appeal phase is concluded. Occasionally, a patent reexamination is terminated based upon a failure of a Patentee to present timely filings.  Once terminated, a certificate is published informing the public of the outcome of the patent reexamination proceeding (i.e., claim changes/cancellations).

For those terminations caused by the failure to present a timely filing, such as an interview summary (ex parte) or a response to an office action, it is possible to petition under 37 CFR § 1.137(b) to have the late papers entered and the termination vacated; thereafter, the patent reexamination proceeding continues. 

But what if the petition is not filed until months after the initial termination, and after the printing of a certificate informing the public that all claims of the patent have been cancelled?

The answer might surprise you.
Continue Reading The Finality of a Patent Reexamination Certificate

Confirmed Dependent Claims Confuse Court?It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay. In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice. At page 4 of the decision, the court explained:Defendants sur-reply that contrary to Plaintiff’s assertions, all of the claims in the Plaintiff’s patent are “virtually certain” to undergo further changes, even the ones that Plaintiff has identified as affirmed. Dkt. No. 101 at 2. Defendants point out that the four independent claims, claims 42 to 45, have been rejected and that claims 46 through 53 depend from those independent claims. Thus, claims 46 through 53 has to “either be amended to independent form, or be made to depend on a new independent base claim” for those claims to be allowable. (emphasis added)This is absolutely not the case. Unlike regular prosecution, it is improper to object to an allowable dependent claim by virtue of a dependency to a rejected base claim. There is never a need to amend such claims. As explained in MPEP § 2260.01.If an unamended base patent claim (i.e., a claim appearing in the reexamination as it appears in the patent) has been rejected or canceled, any claim which is directly or indirectly dependent thereon should be confirmed or allowed if the dependent claim is otherwise allowable. The dependent claim should not be objected to or rejected merely because it depends on a rejected or canceled patent claim. No requirement should be made for rewriting the dependent claim in independent form. As the original patent claim numbers are not changed in a reexamination proceeding, the content of the canceled base claim would remain in the printed patent and would be available to be read as a part of the confirmed or allowed dependent claim. (emphasis added)Rather than pointing this issue out to the court during oral argument to aid in justify the lifting of the stay, unfortunately, shortly after the briefing concluded….the Patentee placed all of the dependent claims in independent form in a December 2010 amendment.( This was done despite the fact that the office, correctly, made no such requirement).Here the stay may very well have remained in place based on other factors beyond the scope of reexamination issue. However, the ability to point out that the claims will not change and that the defendants argument is wrong may have persuaded the judge to lift the stay. Instead, the Patentee now has to wait until September before seeking another reconsideration of the issue.  As pointed out previously, this amendment mistake is quite common, and can often times have significant impact on unexamined, intervening claims.This case was brought to my attention by the great Docket Navigator.

It seems every day there is a new decision issued in a district court addressing a motion to stay pending patent reexamination. (certainly I have written my fair share of posts on the topic). Due to the routine nature of these decisions, I try to avoid discussing the topic too much absent some noteworthy development.

Recently, in Simson Garfinkel v Decru Inc., (EDTX) (here) the plaintiff sought to lift a stay that has been in place since the Summer of 2008. Initially, the case was stayed pending an ex parte patent reexamination (U.S. Patent 6,993,661). The plaintiff requested that the case be stayed until the conclusion of that proceeding. During this reexamination, all the issued claims were cancelled in favor of new claims, which were allowed. Shortly thereafter, the defendants sought inter partes reexamination of the new claims. In a first action, dependent claims 946-53) were confirmed, but the independent claims (42-45) were rejected. After learning of the confirmation of the dependent claims, the plaintiff sought to lift the stay. 

In denying the plaintiff’s request, the court cited the defendant’s argument that the confirmed claims are “virtually certain” to be amended. However, this argument is based on a flawed understanding of patent reexamination practice.…

Continue Reading Stay Continued Despite Confirmed Claims

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

Patent Reexamination Cited in Government Brief to Supreme CourtAs noted last week, the amicus briefing in support of respondent i4i was due last Friday at Supreme Court (Microsoft v. i4i). In i4i’s brief, it was emphasized that by providing the patent reexamination statutes, Congress has tacitly acknowledged the clear and convincing standard. In other words, by providing an alternative USPTO forum in which the clear and convincing standard does not apply, the standard used by the district courts was well understood by Congress.This theme was also emphasized in the amicus briefing, however some briefs seem to struggle with the standard to be used for evidence that may not be considered via patent reexamination  Having failed in their patent reexamination efforts, this category of evidence is at the heart of the Microsoft dispute.The government brief (here) explained the Congressional intent argument as follows:Rather than altering the evidentiary standard that governs validity challenges raised in infringement suits, Congress has created and expanded PTO reexamination procedures, which address validity concerns based on published prior art while minimizing the impact on patent holders’ reliance interests. The potential for the expert agency to reconsider its own decision may diminish to some degree the value of an issued patent by increasing the likelihood that the patent will later be found invalid, but it does not create the same uncertainty as would the potential for a lay jury’s invalidation based on a bare preponderance of the evidence. In addition, reexamination gives the patent holder an opportunity to respond to new evidence of invalidity by amending his claims. Unlike an invalidity challenge in litigation, which may completely and permanently extinguish a patent’s value, reexamination provides a more nuanced mechanism that takes reliance interests into account. . . .When the defendant in an infringement suit asserts invalidity based on evidence that was not before the examiner who issued the patent, but that could have been made the basis for a reexamination proceeding, the clear-and-convincing evidence standard furthers Congress’s intent to channel such challenges to the expert agency. Where it is available, use of the reexamination procedure is consistent with the principle that an agency should have the opportunity to reconsider its prior decisions in light of new evidence. (emphasis added)With respect to evidence that could not be considered in patent reexamination (such as the on-sale bar/admission theory of Microsoft in their dispute with i4i), the government also supported the clear and convincing standard, explaining:When an invalidity challenge rests solely on evidence that was not before the PTO and that could not have been the subject of administrative reexamination, the appropriate standard of proof for determining invalidity is less obvious. Ordinarily, when a court reviewing agency action concludes that the agency’s decision was based on incomplete evidence, the proper course is to remand to the agency. . . .. In an infringement suit, however, that option is not available, and both of the options before the court are in some tension with usual administrative-law principles. Applying the preponderance standard that petitioner advocates would permit the jury to determine for itself what the PTO would or should have done had it considered the new evidence, while the clear-and-convincing evidence standard has the practical effect of according deference to an agency decision that did not consider potentially material facts.As between those alternatives, applying the clear-and-convincing-evidence standard across the board reflects the better reading of Section 282 in light of that provision’s text, history, and purposes. Most importantly, the text of Section 282 does not suggest that the standard of proof governing questions of patent validity varies depending on the nature of the evidence that a challenger introduces. Such a variable-proof regime, moreover, would reflect a substantial departure from the way in which evidentiary burdens typically operate. Although juries routinely give different weight to different types of evidence, petitioner identifies no statute under which the standard of proof governing a particular determination depends on the type of evidence that the parties introduce. The Federal Circuit’s longstanding approach to the question presented here, under which evidence that was not before the PTO “may * * * carry more weight and go further toward sustaining the attacker’s unchanging burden” . . .In the Genentech amicus brief (here) the clear and convincing standard is advanced as appropriate for all evidence save that which is inappropriate for patent reexamination (page 26). Under the Genentech scheme, such evidence would be considered under the more liberal preponderance of the evidence standard.Under the Genentech scheme, Microsoft may win the battle but lose the war. That is to say, at stake in this appeal is Microsoft’s opportunity to weaken the patent system across the board. A relatively narrow exception to the clear and convincing standard may be relevant in the i4i dispute, but far short of the radical change sought by Microso

As noted last week, the amicus briefing in support of respondent i4i was due last Friday at Supreme Court (Microsoft v. i4i). In i4i’s brief, it was emphasized that by providing the patent reexamination statutes, Congress has tacitly acknowledged the clear and convincing standard. In other words, by providing an alternative USPTO forum in which the clear and convincing standard does not apply, the standard used by the district courts was well understood by Congress.

This theme was also emphasized in the amicus briefing, however some briefs seem to struggle with the standard to be used for evidence that may not be considered via patent reexamination  Having failed in their patent reexamination efforts, this category of evidence is at the heart of the Microsoft dispute.
Continue Reading U.S. Gov’t Supports Clear & Convincing Standard

Extraordinary Development Prompts USPTO Relief for Applicants and PatenteesIn view of the terrible tragedy currently challenging Japanese citizens, the USPTO has announced today that patentees in patent reexamination may opt to reset their present due dates. (full notice here). The option is available to those inventors, assignees, and associated individuals in the area affected by

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