Reexamination

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Flawed Patent Reexamination Request A Matter of National Importance?The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California 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. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted seem slim to say the least. The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.As I have commented in previous posts, 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. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. Further, 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 added 22 new claims, this certainly was not harmful.Strange that this dispute has been pursued this f

The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. 

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California 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. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)

Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:

Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.

Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted…
Continue Reading Dispute Over Proper Use of Patent Reexamination Pursued to Supreme Court

Recently Filed Reexaminations Sway California Court to Halt ProceedingTiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  The Washington case is now stayed pending the ITC action, which is set for trial this November.Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.Typically, staying a district court action pending patent reexamination is disfavored when direct competitiors are involved. Rather than considering  the potential loss of market share, customers, and the like, the court emphasized the aggressive, and concurrent actions taken by Microsoft in other fora. The court explained: (full decision here). . .Microsoft claims that it will suffer undue prejudice as a result of a stay because staying this case alone will not increase the likelihood of settlement. Opp‟n 11-12. According to Microsoft, because the ITC Investigation and TiVo‟s suit against AT&T will still continue, Microsoft will have no reason to resolve this case. Id. at 11-12. The Court is not persuaded. If the Court were to stay this case, Microsoft is still asserting against TiVo, in the ITC and in the Western District of Washington, patents related to those at issue here. Those actions also involve the same accused TiVo products as those accused in this case. Moreover, the ITC Investigation is set for trial in November 2011, much sooner than trial in this matter would be possible. Therefore, even if this case is stayed, the parties will go to trial against each other twice within the next seven months, as the Eastern District of Texas case is set for trial in October of 2011, and each trial carries with it the potential for injunctive relief. Thus, it is still possible that Microsoft and TiVo will resolve their broader dispute without this litigation. This, in turn, could lead to settlement here.Prejudice is a hard sell when you have the legal resources and market power of Microsoft.This case was brought to my attention by the great Docket Navigator.

TiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.

TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. 

Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  

The Washington case is now stayed pending the ITC action, which is set for trial this November.

Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.…

Continue Reading Tivo Shuts Down Microsoft Case

SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent ReexaminationAs discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.   

As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) 

In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.

Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.…

Continue Reading SNQ Review Options in Patent Reexamination

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 Lund Affirmed Per CuriamLast May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. Lund’s claim 1 is directed to a laptop computer. The first position is the usual clam-shell orientation (open), the second position enabled the user to rotate the screen and collapse it down on the keyboard in a tablet computer fashion. This was done by removing the screen from a slot connector, reversing the screen and re-inserting it to the connector, or by way of a flexible ribbon cable. (see below)The prior art showed reversible screens that could be moved between such positions, but the electrical connections were distinguishable from those shown in Lund’s patent, at least with respect to mechanical positioning. The orientation sought by Lund is shown below as illustrated in Figs 12 and 15 of the patent.During oral argument, the CAFC noted that the positional features argued were already present in dependent claims 2-8 of the Lund Patent. These claims were not subject to patent reexamination. In an awkward moment for the Patentee, Judge Lourie asked the Patentee why he was on appeal since claims 2-8 already captured what was being argued, and that these claims stood uncontested. Judge Lourie also pointed out that claim differentiation would seem to require a broader reading of claim 1. The Patentee did not have any meaningful rebuttal to these inquiries.Ultimately, the CAFC seemed to agree with the Solicitor that although the claimed electrical connecting means was limited to the structure of the specification, in this case the card or ribbon connector, the function recited did not require any specific mechanical orientation to achieve the recited electrical connection function. So, although other aspects of claim 1 required specific mechanical interaction between components, the function of the electrical connecting means required only connectivity. Absent the existence of the dependent claims, perhaps this case would have been a closer ca

Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) (here). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to electrically connect said display means and said data entry array to said computer means in both said first and said second positions.

The Patentee urged that the means-plus-function structure corresponding to the electrical connecting means was limited to the specific mechanical orientation of the connectors shown in the Lund patent (Figs 12 and 15). Yet, the Board found that the function recited only required an electrical connection, such as provided by the ribbon cable or slot connector of the specification.

Unhappy with the Board’s decision, the Patentee appealed to the CAFC, emphasizing the first and second position aspects of the claimed function, explaining that this language demonstrated that the connector must be mechanically oriented in a specific fashion. …

Continue Reading CAFC Affirms Rejection of Means Plus Function Claims in Patent Reexamination

How Likely Is It to Recover At least 1 Original Claim?  One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011). As shown below, I have broken out ex parte and inter partes cases separately. Confirmed claims were those claims that were actively reexamined and indicated as confirmed in the reexamination certificate, or claims amended to include dependent claims only. The charts below represent the 807 certificates printed from February 2010 – February 2011.Ex Parte Patent Reexamination 59% of Cases Have 1 Claim ConfirmedInter Partes Patent Reexamination 41% of Cases Have 1 Claim ConfirmedThese survival rates demonstrate that there is much more to the story than the all-or-nothing USPTO statistics, and the combined cancellation/amendment figures of defendan

One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.

For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.

Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011).
Continue Reading Surviving Patent Reexamination

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

Using a Parallel Patent Reexamination as Evidence of Invalidity?Increasingly, courts are presented with evidence of a parallel patent reexamination and must determine whether/when such evidence is admissible.Admissibility of evidence is governed by the Federal Rules of Evidence (“FRE”).  In recent cases, where the admissibility of evidence of concurrent reexamination proceedings has been offered with respect to the ultimate question of validity, patentees have attempted to use three rules of evidence to exclude such evidence, FRE 402, FRE 403, and FRE 802.FRE 402 excludes irrelevant evidence.  Patentees, hoping to keep evidence of concurrent reexamination proceedings out of the litigation and away from the jury, have argued that this evidence is irrelevant and should be excluded under FRE 402.  Several courts have agreed.  For example, in the Northern District of Iowa, where reexamination had been granted but no office action had issued, the court stated that “evidence of incomplete patent reexamination proceedings is not admissible to prove invalidity of a patent, because it has no probative value on that issue.”  Transamerica Life Ins. Co. v. Lincoln National Life Ins. Co., 597 F. Supp. 2d 897, 907 (N.D. Iowa 2009) (citing Fed. R. Evid. 402).  Likewise, in the District of Utah, the court held that “evidence concerning the reexamination proceedings is likely irrelevant because it does not have the tendency to make any fact more or less probable than it would otherwise be.” Edizone, L.C. v. Cloud Nine, 2008 U.S. Dist. LEXIS 41258, at *4 (D. Utah, May 22, 2008).  Even where reexamination proceedings resulted in the rejection of claims and the issuance of  actions closing prosecution, the Southern District of Texas still found that such evidence was irrelevant.  Tesco Corp. v. Weatherford Int’l, Inc., 2010 U.S. Dist. LEXIS 121054 (S.D. Tex., Sep. 27, 2010).  The Tesco court stated that “[u]nlike in reexaminations, those challenging the validity of a patent in litigation must overcome a presumption of validity by proving by clear and convincing evidence that a patent is valid.  The conclusions of examiners as to whether a claim should be confirmed or rejected using a completely different standard have no probative value in this context.”  Id. at *27.  Nonetheless, the Tesco court held that evidence of concurrent reexamination proceedings was relevant to the issue of willful infringement.  Id. at *29-30.However, even where such evidence has been found to be relevant, some courts have found that it fails the test of FRE 403.  FRE 403 states that “evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue delay, waste of time, or needless presentation of cumulative evidence.”  Patentees, hoping to exclude evidence of concurrent reexamination proceedings have argued that the probative value of such evidence would be far outweighed by the danger of its prejudice.  Several courts have agreed.  Where the PTO had granted a request for reexamination, the Eastern District of Texas held that “[t]he simple fact that a reexamination decision has been made by the PTO is not evidence probative of any element regarding any claim of invalidity. . . . Even if it was, its probative value is substantially outweighed by its prejudicial effect in suggesting to the jury that it is entitled to ignore both the presumption of validity and the defendant’s clear and convincing burden at trial.” i4i L.P. v. Microsoft Corp., 670 F. Supp. 2d 568, 588 (E.D. Tex. 2009).  The Northern District of Illinois similarly held that “telling the jury that the patent has been called into question by the Patent Office may significantly influence the jury’s application of the presumption of validity and significantly prejudice [the patentee]. The prejudicial potential of this evidence far outweighs any probative value it may have.” Amphenol T&M Antennas, Inc. v. Centurion Int’l, Inc., 2002 U.S. Dist. LEXIS 822, at *5 (N.D. Ill., Jan. 17, 2002).  Even where final rejections had been made during reexamination, the District of Delaware held that “[a]bsent unusual circumstances… non-final decisions made during reexamination are not binding, moreover, they are more prejudicial (considering the overwhelming possibility of jury confusion) than probative of validity.” SRI Int’l Inc. v. Internet Security Sys., Inc., 647 F. Supp. 2d 323, 356 (D. Del. 2009).FRE 802 ensures the inadmissibility of hearsay evidence.  Hearsay is defined as “a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted.”  Fed. R. Evid. 801(c).  In Fresenius Medical Care Holdings, Inc. v. Baxter International, Inc., the patentee argued that the alleged infringer was offering several PTO documents, including the grant of a request for reexamination, to prove the truth of the matters asserted therein.  No. 03-cv-1431 (N.D. Cal. May 15, 2006).  According to the patentee, such documents were hearsay.  In response, the accused infringer asserted that this evidence fell within the public records exception to the hearsay rule, FRE 803(8), and was admissible.  Id.  FRE 803(8) creates an exception for “[r]ecords, reports, statements, or data compilations, in any form, of public offices or agencies, setting forth (A) the activities of the office or agency, or (B) matters observed pursuant to duty imposed by law as to which matters there was a duty to report…, or (C) in civil actions…, factual findings resulting from an investigation made pursuant to authority granted by law, unless the sources of information or other circumstances indicate lack of trustworthiness.”  Fed. R. Evid. 803(8).  In Fresenius, the court found that evidence of a grant of reexamination fell within this exception and was not excludable as hearsay.  Id., slip op. at 4-6.  Specifically, it found that the PTO is a public office or agency, that the determination that a substantial new question of patentability exists is a final decision, and that PTO documents are trustworthy. Id. at 5. For purposes of proving invalidity, evidence of concurrent reexamination proceedings is almost certainly to be excluded as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403.For the above reasons, parallel patent reexamination filings are almost never filed for the purpose of convincing a fact finder that a patent should be found invalid at trial.Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, we have explained the benefits of parallel patent reexamination evidence as: aiding an inequitable conduct defense, impacting claim construction,  rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive reli

Increasingly, courts are presented with evidence of a parallel patent reexamination and must determine whether/when such evidence is admissible.

Admissibility of evidence is governed by the Federal Rules of Evidence (“FRE”).  In recent cases, where the admissibility of evidence of concurrent reexamination proceedings has been offered with respect to the ultimate question of validity, patentees have attempted to use three rules of evidence to exclude such evidence, FRE 402, FRE 403, and FRE 802.

FRE 402 excludes irrelevant evidence.  Patentees, hoping to keep evidence of concurrent reexamination proceedings out of the litigation and away from the jury, have argued that this evidence is irrelevant and should be excluded under FRE 402.  Several courts have agreed.  …
Continue Reading Patent Reexamination Evidence Can Be Prejudicial to Patentees

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

Delay in Case Schedule Allows for Amended Complaint  Previously, Voda v. Medtronic Inc., et. al. (OKWD) examined the impact of multiple requests for patent reexaminationin the context of a motion to stay. Early in the case the defendant Medtronic was able to secure a stay pending a first request for patent reexamination. Shortly thereafter, the

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