Reexamination

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Ronald Katz & Sorenson Research Appeals DecidedFor those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.In Ex Parte Jens Erik Sorenson (4,935,184) yet another expired patent was considered by the BPAI. However, rather than disputing the standard applied to such patents during reexamination, Sorenson disputed the inherency finding of the examiner relative to a key claim term. The Board explained their reversal of the examiner as follows:[C]laim 1 requires that the stabilizing regions provided by the solidified first plastic material must rigidly secure the first common mode part in position in relation to the second complementary mold part.We are of the opinion that the Examiner has not provided a sufficient basis with factual underpinnings to support the position that Moscicki inherently discloses this aspect of claim 1. . . . . [T]hough Moscicki’s first plastic material may impede some movement of the first common mold part in relation to the second complementary mold part, it may not be sufficiently solidified to “rigidly secure” the first common mold part in position in relation to the second complementary mold part. Indeed, the Kazmer Declaration provides evidence that Moscicki’s first plastic material would not “rigidly secure” as required by claim 1.The Sorenson patent expired in February of 2008, thus it would appear to have only 3 years of enforceability remaining (i.e., 6 years beyond expiration). Since any renewed request for patent reexamination is unlikely to reach a final conclusion before that time, it seems that this licensing campaign will contin

For those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.

Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.

Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.
Continue Reading Notorious Troll Patents Reconsidered by USPTO

USPTO Forced to Turn a Blind Eye to Support Issues in Patent ReexaminationLast year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2nd is not possible.  As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)Although the Patentee in Avid appeared to identify structure in their brief, the Board indicated that the cited structure did not clearly correspond to the claim language, explaining:In the absence of any specific structure in the Specification corresponding to the claimed “means for extracting data,” we construe the “means” as including any structure that can be represented by a box that performs the recited function or equivalents thereof. (emphasis added).If this had been an appeal of a patent application, a 112 2nd paragraph rejection would have certainly been issued, not so for patent reexamination.Ultimately, the Avid appeal affirmed art rejections of the MPF claims. As such, this claim interpretation conundrum may seem harmless. Still, in appeals where the art rejections of MPF claims are reversed, application of the BRI standard effectively broadens the scope of the reexamined claims– in violation of the statute. Perhaps more significantly, the creation of such a record is unnecessarily misleading the public as to the proper scope of such claims.MPF support issues are increasingly case dispositive in patent litigation.  Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed.Cir. 2008) See also Blackboard, Inc. v. Desire2Learn Inc., No. 2008-1368, slip op. at 21 (Fed. Cir. July 27, 2009).Interestingly, in a different patent reexamination context, a challenge to 112 written description is permitted. For example, if the patent subject to the reexamination request claims priority to a parent case, intervening prior art may be presented together with an argument that the priority claim is ineffective as to written description. Presumably, the 112 analysis is permitted in this context as the request is not attacking 112 support of the reexamined patent, but instead, corresponding disclosure of a parent. Therefore, the SNQs presented are still based on patents and printed publications as they do not explore 112 issues of the underlying specification.It seems that MPF claims cannot be properly reexamined at the USPTO until the conflict between the above noted patent reexamination statutes is remedied. Although the current patent reform legislation before Congress addresses many aspects of post grant practice, this issue remains outstandi

Last year I explained that the patent reexamination statutes preclude proper review of originally issued means-plus-function claims (i.e., claims drafted to invoke 35 U.S.C. § 112 6th paragraph). This is because a proper examination of a means-plus-function claim requires consideration of the structure and acts described in the specification. Once such acts/structure are identified, then a determination is made as to the equivalence of the acts/structure of the cited prior art. Yet, where support is deficient for MPF claims, a rejection pursuant to 35 U.S.C. § 112 2nd is not possible.  

As a reminder, 35 U.S.C. § 112 cannot be used to reject original claims in patent reexamination. Such a rejection is inappropriate as it would not be based on a “patent or printed publication as required by 35 U.S.C. § 301. See MPEP 2258 (II). Thus, in cases where the specification support is deficient, the USPTO must ignore this deficiency during patent reexamination. Instead, the claims are examined by turning a blind eye to the indefiniteness issue and applying the familiar broadest reasonable interpretation standard. 

In applying the BRI standard, the scope of MPF claims are broadened beyond their relatively narrower, statutorily defined scope–which is limited to the specific act/structures of the specification and equivalents. Confusingly, enlarging the scope of a claim in patent reexamination is also in direct conflict with a patent reexamination statute, 35 U.S.C. § 305. This patent reexamination paradox was most recently demonstrated in Ex Parte Avid Identifications Systems Inc. (U.S. Patent 5,499,017)…
Continue Reading Deficient Means-Plus-Function Claims Broadened in Patent Reexamination

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

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

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

Additional Prosecution History Proves CrucialA successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer, may provide new, non-infringement positions to defendants.This week, the CAFC relied upon statements made by a Patentee in the patent reexamination of U.S. Patent 5,355,964 to affirm claim construction findings of the EDVA and NDCA.In American Piledriving Equipment Inc., v. Geoquip, (CAFC 2011), the court explained:The prosecution history removes all doubt that one of ordinary skill in the art would have understood the term “integral” to mean “formed or cast of one piece.” During reexamination, American Piledriving attempted to distinguish a prior art reference by arguing this very point . . . American Piledriving nevertheless argues that it did not clearly and unmistakably disavow the construction of “integral” it urges on appeal. It points out that it did not amend its claims and made multiple arguments to overcome the asserted prior art reference. American Piledriving contends that the statement was unnecessary to overcome the reference and that the examiner explicitly disagreed with it. “[W]e have made clear . . . [that] an applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Moreover, regardless of whether the examiner agreed with American Piledriving’s arguments concerning “integral,” its statements still inform the proper construction of the term. See Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005) (“An applicant’s argument made during prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the argument.”); Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We have stated on numerous occasions that a patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”). American Piledriving unambiguously argued that “integral” meant “one-piece” during reexamination and cannot attempt to distance itself from the disavowal of broader claim scope. (emphasis added)The above result bears out a very important application of patent reexamination concurrent with litigation, namely, the creation of additional fodder for claim construction purposes.Clearly, a successful patent reexamination from a defendant perspective does not necessarily require that a Patentee cancel or amend claims. As such, when facing a suit in a district court in which a Markman Hearing is scheduled some 12-18 months in the future, initiation of patent reexamination at the outset may prove an effective strategy to focus the later deba

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer, may provide new, non-infringement positions to defendants.

This week, the CAFC relied upon statements made by a Patentee in the patent reexamination of U.S. Patent 5,355,964 to affirm claim construction findings of the EDVA and NDCA.
Continue Reading Patent Reexamination Exposes Double Talk

42% of 2007 Cases Remain StayedPatent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request?In 2007, 81 cases were stayed pending patent reexamination. Looking at the status of these cases today, long term results demonstrate a significant advantage for defendants. As shown in the chart below, the combined results of 2007 cases stayed for both ex parte and inter partes reexamination requests is illustrated. (click to enlarge)As shown above, only 35% of cases were reopened after the initial stay. This indicates that as much as 65% of stays yield a favorable result for the defendant (i.e., remain stayed/dismissed). While it is possible that some cases were dismissed upon favorable settlement to the defendant, such does not appear to be the case.In those cases involving only ex parte patent reexamination (below) 46% of cases are reopened (a negative result for defendants), with 54% of cases ending favorably to a defendant.(Click to enlarge)Interestingly, those defendants seeking inter partes patent reexamination fared much better than those seeking ex parte patent reexamination.In those cases involving only inter partes patent reexamination, or both inter partes reexamination and ex parte reexamination, (below) only 18% of cases have been reopened, with a staggering 50% of cases still stayed. Adding together the 32% of cases that have been dismissed, indicates up to an 82% favorable result for such defendants.A common complaint of Patentees facing a motion to stay pending inter partes patent reexamination is that granting of such a motion effectively suspends the case for years on end. In view of the 2007 results, it seems likely that argument will proliferate as defendants embrace inter partes filings in increasingly greater numbe

Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.

But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request?

In 2007, 81 cases were stayed pending patent reexamination. Looking at the status of these cases today, long term results demonstrate a significant advantage for defendants. …
Continue Reading What Happens After A Case is Stayed Pending Patent Reexamination?

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

…

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

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

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

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

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

Lack of Patent Reexamination Discussion in Microsoft Brief EmphasizedAs I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue. In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. The i4i brief (here) summarizes the patent reexamination arguments noting,A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing   standard by leaving the standard alone and instead making other changes, principally authorizing reexamination.  (emphasis added)Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next we

As I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  

In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue.

 In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. …

Continue Reading Patent Reexamination Statutes Support Clear & Convincing Standard

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

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

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

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

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

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

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

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

But what about expired patents? 

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

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