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USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105

As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered persuasive, the examiner must be able to identify a nexus between the merits of the claimed invention and the evidence of secondary considerations. The term “nexus” identifies a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. In the vast majority of cases involving such evidence, the required nexus is deemed insufficient.

Yesterday, a typical rejection of such evidence was once again demonstrated by the BPAI in Ex Parte Smiths Interconnect Microwave Components. Inc. Interestingly, the Patentee argued that a nexus was demonstrated as the sales figures provided related to the product described in their patent. In rejecting this nexus, the BPAI relied on Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI 1990). The Board explained the holding of Remark as clarifying that [i]n civil litigation, once a prima facie nexus is demonstrated the burden switches to the opposing party to show that commercial success was due to extraneous reasons, while in ex parte proceedings the USPTO lacks the evidentiary means to show that commercial success is due to reasons other than the merits of the claimed invention.

Yet, the above noted case predates the enactment of 37 CFR § 1.105. Rule 105 provides the very evidentiary means to explore deficiencies in submitted declarations.
Continue Reading Requests for Information in Ex Parte Patent Reexamination

Lockwood Reexamination Gripe Goes Nowhere

As discussed last week, the case of Lockwood v. Sheppard, Mullin, Richter & Hampton was recently argued before the CAFC. Wasting no time, today, the CAFC affirmed the lower court ruling without comment. As I explained in last week’s post, this result is not at all surprising given the exchange during oral argument. The decision is correct in my view.

Providing a state law action for suing requesters would inevitably lead to any difference of opinion (as to the strength of a patent reexamination request) being litigated. For example, roughly 25% of ex parte reexaminations are concluded with all claims confirmed, this does not make those requests a “sham.”

A true sham filing is a criminal act, this seems to be lost on most commentators.
Continue Reading Sham Patent Reexamination Argument Goes Nowhere

A Case for Suing the Wrong LawyersLast March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The court determined that the state law cause of action was preempted by federal law (i.e.,  the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC.By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.In addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?At issue in the reexamination was whether or not the submitted references qualified as prior art. The Lockwood patent arguably benefited from a 1984 priority date (based on a parent CIP). A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984. The Requester provided no explanation of the right to priority of each claim (in order to apply the manual as intervening art), nor how the public use of a system could be considered in patent reexamination. (See 90/006,623 for more information, particularly the response filed 7/20/05 and the original request).Interestingly, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood also added 22 new claims.The request that was filed would never be accepted today, it lumps rejections together, fails to identify key dates, claim interpretation, etc…but things were different prior to the creation of the Central Reexamination Unit in 2005. To be sure, the request was poorly reasoned, and should have been denied. Yet, even assuming Lockwood is allowed to pursue their claim at the state level (which seems very unlikely based upon the tenor of the CAFC questioning last week at oral argument) what is the real economic harm? Will Lockwood argue that they settled for too low an amount, would Sheppard counter with the seemingly poor legal advice Lockwood was following as a contributing factor?Seems to me that Lockwood sued the wrong attorneys if they were truly fooled, and harmed, by this alleged “sham” reque

Last March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)

In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The court determined that the state law cause of action was preempted by federal law (i.e.,  the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC.

By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.

In addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?
Continue Reading Sham Patent Reexamination Dispute Before CAFC

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

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

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

64ChangingHorsesAs I noted last week, patents exit reexamination everyday. Most such occurrences pass without much notice to the public (aside from typical Business Wire fanfare manufactured by some Patent Owners). Yesterday was different, since the greatest invention EVER exited reexamination…no not the business method patent for the NFL Redzone Channel (probably doesn’t exist, but should), even better, the Tivo time warp patent, U.S. Patent 6,233,389….known to couch potatoes the world over as the “fast forward through commercials patent.”

This is the second go-round for the Tivo Patent in reexamination, now the subject of a very interesting dispute with Echo Star relating to a $300 million dollar judgment.

Although the NIRC is not yet posted to PAIR, it appears that claims 31 and 61 (the only claims subject to reexamination) were confirmed. Looking at the last response, the USPTO must have been convinced that the secondary indicia of non-obviousness for such a household name was persuasive; of course, there were technical distinctions made as well. Also apparent from the last response is that Tivo changed reexamination counsel once they received the final rejection.
Continue Reading Tivo’s Change in Horses Leads to Termination of Patent Reexamination

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Updated October 6th (see end of post)

While living dangerously, Star Scientific seems to have somehow avoided disaster. Although the petition decisions have not yet been posted to PAIR, a press release issued yesterday noted that the USPTO had revoked the NIRCs of May 12, 2010. (petitions granted-in-part). A revised press release seems to have issued later noting that the PTO was just “considering” reopening prosecution.

Back in May, we discussed Star’s submission of an interview agenda in place of an interview summary. (See 90/009,372 and 90/009,375). Subsequently, Star tried to convince the USPTO that the proposed agenda (which was submitted prior to the interview) actually was a summary of the the interview itself. On May 17, 2010, Star submitted the agenda again, with an expert declaration explaining that the PTO rules were satisfied by the interview agenda.

While the actual petition decisions are not yet available, it is clear that the PTO is accepting that Star submitted “something” thus avoiding termination (for now anyway), but is requiring Star either explain how the agenda reflects the actual discussion of the interview, or to petition for revival of the proceeding under 37 C.F.R. § 1.137 along with an actual interview summary. In their press release, Star reports the later action as the simple filing of a “routine petition”….which begs the question: Why didn’t Star just do that in the first place?
Continue Reading Star Scientific Avoids Termination of Patent Reexaminations

Unwary Practitioners Often Inadvertently Surrender Claim Scope in Patent ReexaminationWith so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01But, what difference does it make if the independent claim is amended?The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academ

With so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.

Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.
Continue Reading Card Activation Technologies Tripped Up in Patent Reexamination?

New Ex Parte Patent Reexamination Pilot Program a Tough Sell

Back in August, I reported on a new USPTO pilot program designed to decrease pendency in ex parte patent reexamination by seeking waiver of the right to file a Patent Owner Statement.

According to 2009 PTO statistics, Patent Owners filed statements in 10% of ex parte reexaminations. This is because filing of such a statement gives a Third Party a one-time rebuttal opportunity. Otherwise, Third Party participation is precluded by statute in ex parte reexamination. Therefore, by simply waiting for the Office to issue the first action, the Third Party is effectively silenced for the duration of the proceeding.

The new pilot program seeks to avoid the period of time the USPTO must wait to receive a Patent Owner Statement by requesting an early waiver of this right from the Patent Owner. Assuming the Patent Owner cooperates upon receiving notice of the initial request filing, the USPTO can reduce pendency by avoiding this front loaded, down time.

Since the program has been in operation for a few weeks now, it seemed like a good time to review the early results, and caution certain Patent Owners on how this seemingly trivial question of procedure may come back to haunt them. …
Continue Reading Waiver of Patent Owner Statement Disfavored in Ex Parte Patent Reexamination

Proposed Patent Reexamination Pilot Program Touted as Pro-Business

In Monday’s Federal Register, a pilot program entitled Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System was introduced (here). The notice requests comments from the public on a newly proposed enhancement to ex parte patent reexamination that would allow certain Patent Holders to advance to the head of the USPTO line. The Patent Holders qualifying for this enhanced treatment would be those “demonstrating humanitarian practices with patented technologies.”

The notice primarily presents 12 questions proposed to the public, seeking guidance on a test that would properly identify a humanitarian practice stemming from a subject patent. Specifically, comment is sought on weighting and filtering factors that would best define the “humanitarian use” and  “humanitarian research” definitions that would entitle a patent to consideration under the pilot program.

The proposal appears modeled after an FDA program that provides “vouchers” to such patent holders for advancing them to the front of that agencies review line. The PTO proposes a similar system in which the ex parte reexamination of such patents would be completed (excluding periods spent by the Patent Owner to respond) within 6 months.

The USPTO is to be applauded for their efforts to address real world business realities, yet, in this instance, I am left wondering if this proposed program can meet its stated goals.
Continue Reading Jumping to the Head of the Line in Ex Parte Patent Reexamination?

Cellectis Patent Surrendered by Operation of Inter Partes Reexamination Pendency

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

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

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

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