Reexamination

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Notorious Portfolio Stands Gutted by USPTOToday at 2PM, the CAFC will hear oral arguments in the patent reexamination appeals of NTP Inc. (Wall Street Journal article here). After years of prosecution and appeals through the PTO system, the NTP patent reexaminations of NTP v. RIM fame finally get their day in federal court.As discussed last year, the USPTO rejected all but one of the previously adjudicated NTP claims. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected by the USPTO. These rejections were later affirmed by the Board of Patent Appeals & Interferences (BPAI).  Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).As to the newly added claims, thesewill not be enforceable until printed by the USPTO. Even then damages will only be available from the time of printing, until expiration, in 2012. As printing is still months away these claims seem to be of marginal strategic value.The CAFC has set aside an entire afternoon to hear these appeals en masse. It seem unlikely that the rejections will be reversed as NTP has relied on some fairly “controversial” theories to put it diplomatically. To date NTP has argued that a certain Telenor art reference was fabricated by the requester, and that Markman decisions are binding on the USPTO.For those interested in hearing the oral arguments, audio recordings should be posted on the CAFC website some time Frid

Today at 2PM, the CAFC will hear oral arguments in the patent reexamination appeals of NTP Inc. (Wall Street Journal article here). After years of prosecution and appeals through the PTO system, the NTP patent reexaminations of NTP v. RIM fame finally get their day in federal court.

As discussed last year, the USPTO rejected all but one of the previously adjudicated NTP claims. Specifically, all of the claims of NTP Inc’s U.S. Patents 6,317,592, 5,819,172, and 6,067,451 were rejected by the USPTO. These rejections were later affirmed by the Board of Patent Appeals & Interferences (BPAI).  Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM).

As to the newly added claims, these…
Continue Reading NTP Patent Reexamination Appeals Heard Today At CAFC

Setting the Stage for a Showing of PrejudiceObtaining a stay of an ongoing district court infringement action is one of the many benefits of patent reexamination concurrent with litigation. Defendants that are able to obtain a stay pending patent reexamination can avoid cost prohibitive litigation discovery during the course of the USPTO proceeding. In addition to cost savings, there are also tactical advantages to the USPTO proceeding. Unlike the courts, in patent reexamination, the USPTO does not recognize the presumption of validity. Moreover, the USPTO does not require the “clear and convincing” standard to demonstrate invalidity in patent reexamination, but employs the more liberal “preponderance of the evidence” standard. As such, defendants can enhance the strength of their invalidity defense via patent reexamination. As defendants increasingly employ patent reexamination as a litigation tool, patent owners must adapt their game plan.Patent Owners often select patent friendly forums for their perceived reluctance to invalidate U.S. Patents, such as the Eastern District of Texas. Such forums are oft times equally reluctant to stay an ongoing infringement action in favor of a patent reexamination proceeding. However, for those Patent Owners forced into less friendlier fora, what steps can be taken to avoid a stay pending patent reexamination?One of the factors generally considered when ruling on a  motion to stay is whether or not the stay will unduly prejudice, or present a clear tactical disadvantage to, the non-moving party. In the case of direct competitors, court’s will often give greater weight to the potential business prejudice in delaying the court action. Therefore, to emphasize this potential for prejudice, and to anticipate the need to demonstrate such, it is imperative that Patent Owners move for a preliminary injunction.In weighing the relative merits of staying an ongoing court action between competitors, the Patent Owners request for injunctive relief is given significant weight. As recently discussed in Osmose, Inc. v. Arch Chemicals, Inc., et al., 2-10-cv-00108 (VAED, Norfolk) (previous post here)Although Osmose has not filed a motion for a preliminary injunction, the complaint does seek injunctive relief. Osmose therefore might be prejudiced by a multi-year stay that could allow defendants to both continue selling the allegedly infringing products and further increase their market share.   Further, last week it was emphasized that the timing of the request for injunctive relief may also impact the relative equities of staying the case. In Richtek Technology Corp., et al., v. uPI Semiconductor Corp. et. al., 3-09-cv-05659 (NDCA), the court emphasized that:Richtek has not filed a motion for a preliminary injunction in this year-and-change-old district court action. Although Richtek expressed intent to eventually file a preliminary injunction motion at the October 2010 case management conference and in its early January discovery dispute letter brief, it did not even request permission to file such a motion until nearly a week after motion practice was suspended in mid-January (Dkt. Nos. 108 at 14, 229 at 2, 242). If the threat of irreparable harm truly were imminent, then Richtekwould not have dragged its feet this long. Richtek has not shown that it would suffer irreparable harm or clear tactical disadvantage as a result of a stay of this action.For Patent Owners anticipating a motion to stay pending patent reexamination, an early motion for preliminary injunction can go a long way in demonstrating potential prejudice relative to a direct competit

Obtaining a stay of an ongoing district court infringement action is one of the many benefits of patent reexamination concurrent with litigation. Defendants that are able to obtain a stay pending patent reexamination can avoid cost prohibitive litigation discovery during the course of the USPTO proceeding. 

In addition to cost savings, there are also tactical advantages to the USPTO proceeding. Unlike the courts, in patent reexamination, the USPTO does not recognize the presumption of validity. Moreover, the USPTO does not require the “clear and convincing” standard to demonstrate invalidity in patent reexamination, but employs the more liberal “preponderance of the evidence” standard. As such, defendants can enhance the strength of their invalidity defense via patent reexamination. 

As defendants increasingly employ patent reexamination as a litigation tool, patent owners must adapt their game plan.
Continue Reading Avoiding a Stay Pending Patent Reexamination

FY 2011 Q1 Numbers Released by USPTO Q1 of fiscal year 2011 is now in the books at the USPTO. Patent reexamination filings continue to trend upward and are on track to surpass 2010 numbers by a healthy margin.  (USPTO Patent Reexamination Statistics here)Inter partes patent reexamination filings in particular continue to grow. (here)  Over 

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Microsoft v. i4i: Legislative Intent of Patent Reexamination?The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence. Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.So, why does the USPTO use a different standard? Microsoft’s brief, as well as several of the supporting amicus briefs, cite to In re Etter,756 F.2d 852 (Fed. Cir. 1985) for the proposition that there is no presumption of validity at the USPTO in patent reexamination. Based upon this, the briefs conclude that if this lower standard is good enough for the USPTO, then why not the courts?Absent in any of these briefs is the explanation in Etter that explains the rationale behind the difference, namely:In litigation, where a patentee cannot amend his claims, or add new claims, the presumption, and the rule of claim construction (claims should be construed to save them if possible), have important roles to play. In reexamination, where claims can be amended and new claims added, and where no litigating adversary is present, those rules and their rationale simply vanish. (emphasis added) Etter at 859.So, if Congress has provided for the very relief Microsoft is requesting via patent reexamination, how is the intent of Congress not crystal clear in this respect? Can the SCOTUS provide the seemingly legislative remedy sought by Microsoft? Perhaps anticipating the argument that the patent reexamination statutes reinforce the CAFC’s reading of § 282, and demonstrate a Congressional intent to provide an alternative forum for prior art not previously considered, several amicus briefs go beyond Microsoft’s passing discussion of patent reexamination.In one supporting brief, it is argued that a final determination in a litigation under 35. U.S.C. § 317(b) would estopp the same litigant from invalidating a patent in inter partes patent reexamination. The argument is that such estoppel results in a litigant being exclusively held to the clear and convincing standard, despite the existence of the lower patent reexamination standard. It is argued that such a result is inconsistent with the legislative intent to “correct governmental mistakes,” that is, unless the standards are made the same in both proceedings.This is a very strange take on inter partes estoppel.The very point of the estoppel provisions is to thwart the conduct suggested in the brief, namely, serial attacks on a patent in different forums by a same party (i.e., harassment). Third parties should not be “resorting” to inter partes patent reexamination after losing a litigation, but instead, seeking such relief in the first instance. Further, ex parte patent reexamination is unaffected by § 317(b).The ultimate decision will likely focus on how the CAFC divined the clear and convincing standard from § 282 in the first instance. Still, the creation of the inter partes patent reexamination statutes, as well as the pending reform legislation would seem to provide ample fodder for arguing that Congress is well aware of the CAFC’s jurisprudence in this regard.For another interesting take on the interplay of patent reexamination to the § 282 dispute, note the example jury instructions in the IBM brief.This case is going to be very very interesti

The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.

Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.

Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.

In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.

So, why does the USPTO use a different standard? …
Continue Reading Patent Reexamination Statutes Before Supreme Court

You Are Not Special

Speed of Patent Reexamination Not So Special?

As most readers of this blog realize, 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. Of course the ultimate determination of whether or not a stay is appropriate varies with the facts of each case, and attitudes toward such practices vary wildly across jurisdictions, and even across judges of the same court. 

Last week’s determination in Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED, Norfolk) was typical in many respects. With discovery coming to a close, Markman proceedings complete, and trial scheduled in three months time, it seemed the timing alone was enough to deny the motion to stay. While the stay was denied, the court took the opportunity to call out the special dispatch accorded patent reexaminations at the USPTO as….well, not so special.
Continue Reading Virginia Court Derides USPTO’s Special Dispatch

Unreasonable to Extend Claim Scope to Described Prior ArtPerhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.The decision, ex parte Jorgen J. Muller Jr., (here) revolved around an injection molded floor panel. Specifically, the claims were directed to structure of the panel that helped eliminate undesirable “sink marks” of the tile that otherwise form when the tiles are curing. In this regard, the claims recited an area defined by each of the one or more structures is contained within and positioned directly above an area defined by the one or more support members.A figure of the patent is reproduced below showing the area defined by the support members.The area defined by the upper structures 220 are entirely contained within, and aligned with, an area defined by the lower support members 215 and 217.Yet, the Examiner interpreted the limitation, “an area” of the structure is “contained within” an area defined by the support member, as requiring that only a part of the structure be contained within the support member. Thus, the Examiner interpreted the claim to permit the top structures to extend outside the area of the bottom support members.The Board noted that the Examiner interpretation was inconsistent with the specification, and therfore, unreasonable as clearly embracing the prior art discussed in the specification of the patent. The prior art discussed as suffering from the “sink mark” problem was illustrated in the patent as Fig. 3B below.The Board noted that, with regard to Fig. 3B:[T]he Examiner’s interpretation of the disputed limitation corresponds to the configuration of the prior art tile depicted in Figure 3. This configuration is discussed above as resulting in sink marks. It is not reasonable to read the claims as reading on a prior art configuration which was expressly addressed and remedied by the ‘592 patent.The Board then continued to explain that one of skill in the art would understand the claimed area to be within the vertical alignment of the structures and support members.There are few bright lines in interpreting claims under the BRI standard. However, one seems to be that any interpreation embracing disavowed claim scope of a patent specification is unreasonab

Perhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.
Continue Reading Specification Disavowal Limits Claim Scope in Patent Reexamination

Timing of Post Filing Conduct Deemed Crucial

As discussed previously, one purpose for seeking patent reexamination parallel to litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent.

As Fairchild semiconductor learned the past week, it is probably best not to wait 5 years into a litigation and after a jury trial to showcase that objectively reasonable behavior.
Continue Reading Patent Reexamination After an Adverse Jury Verdict

                                                                                                                          Inter Partes SNQs Outpace Ex Parte 2:1 

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Looking back on 2010 patent reexamination filings, the mean number of Substantial New Questions of Patentability (SNQs) presented differs based upon the type of reexamination proceeding.  For ex parte patent reexamination, the mean value is 8.7 SNQs per request, for inter partes patent reexamination the number is 17.3 SNQs per request. The median values are 6 for ex parte patent reexaminations and 11 for inter partes patent reexamination. Of course, these numbers are unlikely to surprise most practitioners.

For example, ex parte patent reexamination may be requested by a patent owner. In such situations there is certainly little motivation to bury the USPTO in reasoned statements to undermine patentability (IDS filings are another issue altogether). More importantly, requesters of ex parte patent reexamination are not bound by the estoppel provisions of inter partes patent reexamination.
Continue Reading SNQ Rates in Patent Reexamination

Petition Filings Soar in Patent Reexamination

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

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

Widely Asserted Patent Claim Held Invalid at USPTO

The Rambus patent portfolio is well known, if not notorious, in the semiconductor industry. Over the years, Rambus has aggressively pursued licensing deals with Infineon, Hynix, Samsung and others. More recently, Rambus has been on the offensive against industry stalwarts such as Broadcom, Freescale, LSI, MediaTek, nVidia and ST Micro. 

As with any high value patent disputes, concurrent patent reexamination proceedings have been initiated at the USPTO against the Rambus portfolio. While these proceedings have largely co-existed without greatly impacting the Rambus litigation juggernaut, that may change as appeal proceedings conclude at the USPTO. 

In a Board of Patent Appeals & Interferences (BPAI) decision today, a decision rejecting Rambus’ U.S. Patent 6,034,198 in view of certain prior art was affirmed.…

Continue Reading Rambus Tripped Up at USPTO