Procedures

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Can an Ongoing Patent Reexamination be Stopped?With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel.35 USC § 317 (b) provides:(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings. (emphasis added)It is important to note that the estoppel provisions of inter partes patent reexamination do not apply to ITC proceedings, see our earlier discussion of this issue.With respect to district court proceedings, where parties agree to settle, and the defendant is also willing to accede to a consent judgment stating that they have failed to prove invalidity, such may serve as a final judgment. (once the 30 day time to appeal the consent order has passed). In considering the language of the consent order, the USPTO will look to whether or not the claims of the ongoing inter partes reexamination are the same as that at issue in the litigation. For claims of the ongoing reexamination that are not subject to the consent judgment, the reexamination would continue as estoppel would not attach for these claims. (likewise for any newly added claims) Attached is a 2009 petition decision detailing a vacatur of an inter partes patent reexamination. (here)In practice, defendants rarely agree to such a consent order since such a public humliation is not all desirable. (e.g., especially if the defendant is frequently the target of patent trolls). Likewise, as noted in the petition decision linked above, although the reexamination is vacated by the estoppel as to the particular setttling defendant, the unfinished business of the reexamination may be easily “re-started” by another competitor. Still, in settling patent disputes concurrent with inter partes patent reexamination, plaintiffs may be amenable to such a consent judgement ….for the right pri

With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”

In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.

In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel.
Continue Reading Turning Off an Inter Partes Patent Reexamination

Silence in Original Prosecution History Used Against Patent OwnerAs discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.Yet another interesting BPAI case that appears destined for the CA

As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.

Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)…
Continue Reading Estoppel by Inaction, BPAI Forecloses Argument in Patent Reexamination

speedYesterday, the USPTO announced a pilot program, effective immediately, aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” will be triggered once a new ex parte reexamination request is accorded an initial filing date.

In devising the pilot program, the USPTO has explained that only 10% of Patent Holder’s take advantage of the opportunity to submit a Patent Owner statement. (Inter Partes Reexamination does not provide for Patent Owner’s Statements). The reason behind the lack of enthusiasm in filing Patent Owner statements is that the filing of such a statement entitles the Third Party to a rebuttal. Outside of the filing of such a statement, Third Party participation in ex parte reexamination is precluded by statute. Therefore, simply waiting for the Office to issue the first action effectively silences the Third Party for the remainder of the proceeding.

The Federal Register Notice explains that the new pilot program will seek to reduce overall pendency by cutting out this front loaded, dead time found in 90% of ex parte reexaminations. [T]he USPTO will contact the patent owner and request the optional waiver of the right to file a patent owner’s statement after the proceeding has been granted a filing date and before the examiner begins his or her review. This will enable the USPTO in suitable cases to issue the first Office action on the merits (including an NIRC) together with or soon after the order for reexamination, and thereby reduce the pendency of the proceeding by about three to five months.

This pilot program is a very positive step, and makes perfect procedural sense. The USPTO is to be commended for attempting to tackle the pendency issue. Yet, I expect that few Patent Holders, given the chance, will take advantage of the program.
Continue Reading USPTO Pilot Program Announced to Accelerate Ex Parte Patent Reexamination

CAFC to Decide Prosecution Laches in Patent Reissue

Earlier this year we discussed the Ex Parte Tanaka decision of the Board of Patent Appeals & Interferences (BPAI) with respect to “bullet claims”  in patent reissue, now before the CAFC. On June 24, 2010, a second Board decision relating to patent reissue was appealed to the Federal Circuit (Ex Parte Staats).

Although presented in the context of patent reissue, the point of contention in Staats is actually one of prosecution laches and the application of equitable principles to statutory interpretation. In Staats, the Board upheld a rejection of a broadening reissue application as defective under 35 U.S.C. 251 for failing to include the appropriate broadening oath within two years of the original patent issuance. The Board reasoned that although a parent reissue had filed an appropriate broadening oath and identified at least one error, the continuation reissue was not entitled to rely on that oath, despite the continuity between these reissue applications.
Continue Reading Bad Apple! BPAI Rejects Apple Patent Reissue on Equitable Principles

good-enough3Last Friday, the BPAI issued a decision reversing all rejections in the ex parte reexamination appeal of U.S. Patent 6,513,042. The patent is owned by Test.com and is directed to methods of on-line testing of students (test-takers). The patent was challenged back in April 5, 2006 by the Electronic Frontier Foundation.

The primary issue in this appeal was whether or not antedating declarations (swear behind) required all inventor signatures, or whether or not the declarations can be executed by a representative of the Patent Owner alone. The examiner pointed to aspects of MPEP 715.04 that seemed to imply that all inventors must sign
Continue Reading Test.Com Reexamination Concludes with BPAI Reversal

chanceIn patent application prosecution, patent owners may  file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37 CFR 1.114.  However, these mechanisms are not available in patent reexamination. There may be occasions when additional prosecution may be beneficial in reexamination.  For example, in certain situations special dispatch may be served by the submission of new evidence, prior art,  or amendments. So, is a final action the end of the line?
Continue Reading Petitions Requesting Continued Reexamination (RCR)

quietLast week, the Delaware District Court stayed the litigation proceedings in  Enhanced Security Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No. 09-571-JJF, (June 25, 2010) at the defendant’s request in view of two ongoing patent reexaminations. As the  Delaware court statistically seems more receptive to stays than say, the Eastern District of Texas Court in Marshall Texas, this development is not at all surprising. 

Of more interest to me, is a recent petition decision (April 15, 2010) in the inter partes reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).

In responding to the first action, the Patentee filed a reply over the 50 page limit identified in ( 37 CFR 1.943). Recognizing this problem, the patentee, at the time of filing the reply, simultaneously petitioned for waiver of the page limit under 37 CFR § 1.183. In response, the Third Party filed an opposition petition under 37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition under 37 CFR § 1.183 to waive the rules to allow for consideration of their § 1.182 petition.

In deciding the patent owner’s petition, the Office of Patent Legal Administration (OPLA) granted the Patentee a waiver of the 50 page limit. Curiously, however, OPLA expunged the third party opposition petitions from the record and took the position that third parties have no right to oppose procedural filings of patent owners in inter partes reexamination proceedings. OPLA reasoned that the inter partes patent reexamination statutes only permit a single response to substantive issues of patentability. While I don’t necessarily disagree with OPLA’s action, I find the reasoning to be curious, as I have never seen an inter partes patent reexamination in which third party opposition petitions were not filed.  In fact, the USPTO’s Electronic File System (EFS) has a selectable document code and corresponding description “Reexamination– Opposition filed in response to petition.” ……….What Gives?
Continue Reading Are Third Party Opposition Petitions Permitted in Inter Partes Patent Reexamination or Not?

designCanvasNewSheriff

Last Friday we explained the case of Ex parte Yasukochi et al, in which the Patentee argued that a rejection applied in reexamination was considered during original prosecution, and thus, could not constitute an SNQ. (The rejection at issue did not appear in the original request for reexamination but was newly applied by the Examiner during the reexamination). On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure that must be addressed by petition. The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination.

Under the BPAI’s recent reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition would now be untimely (since more than two months have elapsed since the rejection was made).

Upon second thought, the USPTO has determined that issues
Continue Reading BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination

mouse-5 The Harvard “oncomouse” in case you have never heard of it, is a strange little laboratory rodent genetically modified at Harvard (transgenic) to carry human genes.  One of the more infamous uses of this technology is to grow human ears on mice. As no surprise this bit of genetic engineering was patented back in the 80’s and early 90’s (5,925,803 as well as other related patents) setting off quite a debate as to the metes and bounds of patentable subject matter, not only in the U.S., but around the globe. More recently, the ‘803 Patent has been subject to a request for ex parte reexamination. Of particular interest in this request for reexamination is the assertion by the Third Party that the patent is expired. Of course, anyone familiar with patent reexamination realizes that an expired patent may be subject to reexamination if it is still enforceable (i.e., within a 6 year window of expiration). The real surprise here is that the Third Party argued that the ‘803 Patent expired based on an overly broad terminal disclaimer of a parent application. In the filing, the Third Party requested comment from the USPTO on their terminal disclaimer theory; the USPTO surprisingly obliged. In doing so, the USPTO not only ended the reexamination before it started, but may have invited a lawsuit on the Office best fought by industry. 
Continue Reading The Harvard Oncomouse Patent Reexamination, Over Before it Started?

Silversea_Golf_Ball_Cup_squareAs pointed out in our post on shielding declarants from litigation discovery in patent reexamination, the submission of declaration evidence is quite commonplace in patent reexamination as compared to application prosecution. Last week the Board of Patent Appeals & Interferences (BPAI) issued two decisions affirming rejections of patents under reexamination in which declaration evidence, or the lack thereof was outcome determinative. In this post we will discuss the first case, ex parte Rehrig Pacific Company

In ex parte Rehrig Pacific Company, had declaration evidence been submitted, the outcome may have been very different.

In this appeal, the final rejection in ex parte patent reexamination 90/006,283 of claims 25-35 and 53-56 was considered by the BPAI. A key consideration in applying the art to the claims was whether or not the claim term “top frame” or “top frame assembly” was different from the pallet structure of the prior art (from the perspective of one of ordinary skill in the art). No declaration evidence from one of skilled in the art was presented on this key issue.
Continue Reading Close Calls: Declaration Practice in Patent Reexamination