Procedures

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Shotgun Approach to Patent Reexamination Request Haunts DefendantWithin a few days of filing, requests for patent reexamination are reviewed by the USPTO for basic compliance as to matters of form. Currently, upward of 30% of filings are returned as non-compliant. While practitioners may find this perceived nit picking an annoyance, as a recent case demonstrates, the USPTO may be doing you a huge favor.Yesterday, in Old Reliable Wholesale, Inc. v. Cornell Corp., (Fed. Cir. 2011), the CAFC reversed an award of attorney fees and costs (roughly $200k) to defendant Cornell. The fee award stemmed from an earlier infringement suit of U.S. Patent 5,069,950 directed to insulated roof board. The reversal as to fees was based, in part, on the fact that the USPTO favorably concluded an ex parte patent reexamination (90/009,258) of the ‘950 patent.While the CAFC reversed the fee award based upon the favorable consideration of certain prior art in the reexamination, it appears as though this art was largely overlooked, perhaps, due to the format of the defendant’s request.The fees were awarded based upon the trial court’s decision that pursuit of the litigation beyond a certain deposition date was baseless. During a deposition, the plaintiff’s founder seemingly acknowledged the “sameness” of certain prior art relative to the patented claims. As a result, summary judgment of invalidity was entered in favor of defendant Cornell (later affirmed by the CAFC). Shortly thereafter, the defendant sought, and was awarded the $200k costs in the district court for all litigation expenses occurring after the deposition. The prior art that formed the basis of the summary judgment, related to certain products of Cornell and that of another company, Branch River.  These references (in the form of product brochures) were submitted to the USPTO in a request for ex parte patent reexamination on August 20, 2008. After a first action was issued in October of 2009, the proceeding was favorably concluded in a Notice of Intent to Issue a Reexamination Certificate (NIRC) to on June 15, 2010. (As the CAFC invalidated the patent 6 months prior, the PTO corrected the NIRC to cancel all claims two weeks later)In appealling the fee award to the CAFC, the plaintiff pointed out the USPTO’s favorable reexamination conclusion as evidence that the pursuit of the litigation was not unreasonable as to invalidity. (The CAFC took official notice of this patent reexamination evidence since it was not part of the district court record). The CAFC explained:The fact that the PTO, after assessing the relevant prior art, confirmed the patentability of all claims of the ’950 patent undercuts Cornell’s contention that Old Reliable had no reasonable basis for its assertion that its patent was not anticipated. . . .Moreover, although the PTO may not have considered all the deposition testimony relied upon by the district court in making its invalidity determination, the fact remains that the PTO assessed the VT-2 [Cornell] and the Air-Flo [Branch River], as well as many other prior art references, and yet confirmed the validity of all claims of the ’950 patent over the prior art. (emphasis added)However, it is unclear whether or not the USPTO really assessed these references.In their request for reexamination, the defendant presented 14 prior art references, including the Cornell and Branch River art noted by the CAFC. Unfortunately, in presenting the 14 references for consideration, the art was lumped together and argued in the alternative as to anticipation and obviousness. It is unlikely that such a request would be deemed compliant by the USPTO today. (See USPTO FAQ # 4) Still, the request was granted in 2008.In the grant of the patent reexamination, the examiner found that the Cornell and Branch River art constituted SNQs relative to the patent. Yet, the Cornell and Branch River references were not applied in the later rejections. Presumably, the examiner deemed this art, as well as the vast majority of other references, cumulative (although the action is silent as to this issue). Thereafter, the patentee was able to convince the examiner of the patentability of the issued claims in view of the limited art applied. In the NIRC, the examiner simply stated that the “other art did not disclose or suggest” the claims.By arguing in the alternative and lumping together the rejections of the request, the defendant left it to the examiner to pick and choose among the seemingly interchangeable art. Looking back, a notice of non-compliance may have saved Cornell $20

Within a few days of filing, requests for patent reexamination are reviewed by the USPTO for basic compliance as to matters of form. Currently, upward of 30% of filings are returned as non-compliant. While practitioners may find this perceived nit picking an annoyance, as a recent case demonstrates, the USPTO may be doing you a huge favor.

Yesterday, in Old Reliable Wholesale, Inc. v. Cornell Corp., (Fed. Cir. 2011), the CAFC reversed an award of attorney fees and costs (roughly $200k) to defendant Cornell. The fee award stemmed from an earlier infringement suit of U.S. Patent 5,069,950 directed to insulated roof board. The reversal as to fees was based, in part, on the fact that the USPTO favorably concluded an ex parte patent reexamination (90/009,258) of the ‘950 patent.

While the CAFC reversed the fee award based upon the favorable consideration of certain prior art in the reexamination, it appears as though this art was largely overlooked, perhaps, due to the format of the defendant’s request.…

Continue Reading Defendant’s Patent Reexamination Request Undercuts $200K Fee Award

Board of Patent Appeals & Interferences Explains Accessibility ConsiderationsIn the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained thatthe relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the ‘432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the ‘432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the inventi

In the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.

In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained that…
Continue Reading Printed Publications in Patent Reexamination

starStar Scientific’s Belated Victory in Patent Reexamination, Missed Opportunity?

Last week, Star Scientific’s ex parte patent reexaminations (90/009,372 & 90/009,375) were favorably terminated based upon responses filed in November of 2009.  The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.

The 16 month delay between the November 2009 filing and March 2011 termination was the result of a procedural dispute. I discussed this development last Spring for the purposes of illustrating the importance of filing a proper interview summary in ex parte patent reexamination. As I pointed out at that time, misguided petition practice can turn a relatively minor miscue into a much larger problem.

In June of of 2009, a Maryland jury determined that Star’s patents were invalid. The jury also found that RJR did not infringe either patent. Star appealed to the Court of Appeals for the Federal Circuit (CAFC), oral arguments were heard on January 11, 2011. In their appeal, Star is seeking a new trial, alleging that RJR tainted the jury by referencing improper evidence.

On Friday, Star issued a press release touting their patent reexamination results. But, with the CAFC appeal briefed and argued, does the reexamination have any relevance at all?
Continue Reading Patent Reexamination Success as Court Room Evidence

Patent Enforceability Key Factor In Patent Reexamination Eligibility, Not ExpirationIn patent reexamination strategy, especially concurrent to litigation, timing is everything.1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.But what about expired patents? Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, thus the litigation would continue at some point no matter what happened at the USPTO.The decision, found here, also noted some other factors tending to favor continuation of the litigation independent of the patent expiration issue. Unfortunately for Ameridose, typically, seeking a stay where some patents are not subject to patent reexamination is a non-starter; as it was here.The record does not specifically reflect the reason why the defendant did not pursue patent reexamination of the expired patent. However, it seems that Ameridose viewed the expired patent as less likely to weigh in favor of plaintiff prejudice (should a stay be entered) since there are no damages going forward.But, let’s take a look at the patent expiration issue.Of course, it is perfectly appropriate for a patent to be reexamined after expiration. In fact, the USPTO provides a separate claim interpretation standard for such cases. Unlike reissue applications, which cannot be pursued after expiration, patent reexamination is based upon the enforceability of the patent. The period of enforceability is determined by adding 6 years to the date of patent expiration. 37 C.F.R. § 1.510(a)Looking only at the filing date, the ‘086 patent would seemed to have expired on November 24, 2006. However, this patent’s term was extended, due to the regulatory review delay of the Food & Drug Administration. The extended expiration date of the ‘086 patent is September 24, 2010. Thus, the ‘086 patent remains enforceable (for past damage purposes) until September 24, 2016.Surely, had patent reexamination been pursued, relief would not have been possible by operation of intervening rights. This is because an expired patent may not be amended. Still, the patent could have been invalidated by patent reexamination, and the odds of staying the case would have been greatly improved.This case was brought to my attention by the great Docket Navigator.

In patent reexamination strategy, especially concurrent to litigation, timing is everything.

1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)

2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)

3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.

But what about expired patents? 

Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination,…

Continue Reading Patent Reexamination & Expired Patents

When Can the Board Change the Target?In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).At issue in Stepan was the right to priority to a parent application under 35 USC  § 120. Further, a declaration submitted under 37 CFR § 1.131 was submitted to antedate certain 102(a) prior art.  Since the child patent disputed in Stepan was a CIP of the parent, the ability to benefit from the filing date of the parent was considered on a claim-by-claim basis. As such, the examiner determined that certain claims of the Stepan patent were not able to benefit from the 120 priority claim. For these claims, a reference to Singh was determined by the examiner to qualify as 102(b) prior art. Based on this statutory bar, no antedating was possible.The Patentee argued that the 120 priority claim was proper (i.e., 112 support in the parent for the claims), and that priority claim transformed the Singh reference to 102(a) art; thus the Patentee reasoned that the antedating declaration was able to remove Singh as prior art. On appeal, the Board found that the Examiner was incorrect as to 120, and that some of the disputed claims were entitled to priority. However, the Board found that the declaration was insufficient for these claims. In essence, the Board affirmed the examiner by changing the basis of the rejection from 102(b) to 102(a). Rather than seek a rehearing of this issue, Stepan took the dispute to the CAFC.The CAFC and the USPTO pointed out to Stepan that although this change of statutory basis would typically constitute a new ground of rejection, Stepan argued both 102(a) and 102(b) issues in their briefing to the BPAI, and before the examiner. The Patentee countered that had the ground been changed earlier, or designated as such in the affirmance, that the declaration evidence could have been corrected.While a rehearing request to the BPAI is not required before seeking appeal to the CAFC, the panel was not impressed with the failure to point out this issue to the Board prior to the CAFC appeal.Perhaps Stepan would have been better off exploring the controversial district court option to introduce new eviden

In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).
Continue Reading When is a BPAI Rejection Truly New?

Petition Filings Soar in Patent Reexamination

This past Monday, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. As previously noted here, Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:…
Continue Reading USPTO Warns Practitioners on Abusive Filings in Patent Reexamination

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency

 chart1(click to enlarge)

As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date.

In formulating the program, the USPTO noted that roughly 10% of Patentees file such statements. Thus, by presenting the option to waive the statement, arguably, 90% of filings could be accelerated by 3-5 months. Yet, initial response to the program seemed to indicate that Patentees favored this de facto delay.

Now that a larger number of proceedings have been subject to the program a clearer picture is emerging.Continue Reading Patent Reexamination Pilot Program Update

Litigation Based Rationale Falls Flat Before USPTOAs the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,08

As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.

In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.

In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.
Continue Reading Admissions & Patent Reexamination Requests

Petition Filed to Reconsider Denial of 2nd Reexamination

As previously reported, the second attempt by Microsoft to invalidate U.S. Patent  5,787,449 failed on November 24, 2010. Since that time, the dispute involving this patent, (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)) has been accepted for review in the 2011 term by the Supreme Court (just like I always said it would..ahem).

In Microsoft”s petition for cert, they argue against the use of the clear and convincing evidentiary standard for proving a patent invalid. Microsoft argues that this standard should not apply when art is uncovered that was never before the PTO. In essence Microsoft argues that a lower standard, such as used by the USPTO during original prosecution (or patent reexamination) is more appropriate. The case may be the most closely watched patent law question in decades as the ruling could have a game changing impact on the value of patents and patent litigation practices.    

To date, however, Microsoft has not had any success invalidating the ‘449 Patent in patent reexamination.
Continue Reading Microsoft Seeks Director Review of I4I Reexamination Denial

In re Meyer Denies Late 1.131 Declaration Evidence

Due to the limited prosecution window in patent reexamination compared to regular patent application prosecution, submission of declaration evidence under 37 CFR § 1.131 and/or 37 CFR § 1.132 is far more commonplace. (See some of my June 2010 posts for further discussions on declaration practice).

U.S. Patent 5,501,404 is directed to a manure spreader (who knew one needed anything more than a blog for that). The ‘404 Patent is the subject of ex parte patent reexamination 90/010,007. There were two main disputes during the reexamination prosecution, (1) whether or not a parent of the ‘404 Patent supported an amendment introduced during the reexamination for priority purposes, or, alternatively (2) whether the Patentee could “swear behind” intervening prior art from the date of the CIP application underlying the ‘404 Patent (which included support for this claim feature).

In pursuing issue (2) before the USPTO, the Patentee failed to present antedating declaration evidence under 37 CFR § 1.131 until after final rejection. An Advisory Action issued indicating that the declaration evidence had been entered, but explained that it was deficient with respect to the required diligence showing. Days prior to filing the Notice of Appeal to the BPAI, supplemental declaration evidence was filed. This evidence was not entered – – on appeal the examiner’s rejections were affirmed by the BPAI. The refusal to enter the supplemental declaration evidence was explained by the Board as a petitionable issue, that was within the discretion of the examiner.

The Patentee then pursued their case to the CAFC.
Continue Reading CAFC Sides with USPTO in Patent Reexamination Declaration Dispute