Reexamination

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Broadest Reasonable Interpretation (BRI) an Outer Limit?

In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent.  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation 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).

Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).

In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.

However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.…

Continue Reading CAFC Reversal Cites Patent Reexamination Claim Interpretation

Substantial Evidence Found Lacking in Rejection of Means-Plus-Function ClaimYesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.The ‘503 Patent is directed to a spray nozzle technology which provides a circular shield about the spray nozzle to preclude certain particles from entering the spray field prematurely. Claim 5 is written in a Jepson format, and includes a means-plus-function element (don’t try this at home).  The MPF element is a “shielding means.” (read my earlier post on why MPF claims are very desirable in patent reexamination). The  shielding means recites a function of shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly . . . The structure of the specification included both a physical shield and an air barrier.In rejecting claim 5, the USPTO (Control No. 90/008,482) identified a prior art system which utilized a burst of air to clear clogged particles from a nozzle. Claim 5 was rejected as obvious in view of this system. Furthermore, Patentee’s evidence of secondary considerations of non-obviousness was rejected as being related only to the physical barrier embodiment.On appeal, the CAFC explained:The Board properly found that [the art reference] teaches modulating gas flow in the coating apparatus to control particle agglomeration. It is readily apparent, however, that this technique does not shield circulating particles from entering the initial spray pattern. [The art reference] teaches a way to remedy the blockage caused by particle agglomeration using bursts of air. In contrast, Glatt’s invention prevents the agglomeration from occurring in the first place. The Board’s finding that [the art reference] teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because [the art reference] does not teach shielding. [The art reference’s] air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simultaneously, and more importantly, neither of these functions constitutes shielding.With respect to the secondary indicia, the CAFC additionally pointed out that,To the extent the PTO asserts that Glatt needed to submit commercial success evidence from multiple embodiments for that evidence to be commensurate in scope with claim 5, this position is not consistent with our precedent. It seems unlikely that a company would sell a product containing multiple, redundant embodiments of a patented invention. The fact that Glatt’s commercial products only contain one type of shielding means does not make its commercial success evidence irrelevant. Under the PTO’s logic, there would never be commercial success evidence for a claim that covers more than one embodiment. Rather, we have consistently held that a patent applicant “need not sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success.” In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (quoting Applied Materials, Inc. v. Adv. Semi-conductor Materials Am., Inc., 98 F.3d 1563, 1570 (Fed. Cir. 1996)).Although Glatt was successful on appeal, the appeal delay is not without consequence. During the prosecution phase of the patent, while claim 5 was retained in original form, claim 8 was amended  (all other claims subject to reexamination were canceled). Claim 8 was originally indicated as allowable on May 20, 2008, but this claim will not exist in amended form until printed with the reexamination certificate. Thus, the appeal delay has effectively surrendered 3 years of patent term for claim 8 (the printing process will take at least another 12 weeks).

Yesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.…

Continue Reading CAFC Reverses Rejection in Patent Reexamination

Litigation Based Rationale Falls Flat Before USPTOAs the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,08

As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.

In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.

In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.
Continue Reading Admissions & Patent Reexamination Requests

Petition Filed to Reconsider Denial of 2nd Reexamination

As previously reported, the second attempt by Microsoft to invalidate U.S. Patent  5,787,449 failed on November 24, 2010. Since that time, the dispute involving this patent, (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)) has been accepted for review in the 2011 term by the Supreme Court (just like I always said it would..ahem).

In Microsoft”s petition for cert, they argue against the use of the clear and convincing evidentiary standard for proving a patent invalid. Microsoft argues that this standard should not apply when art is uncovered that was never before the PTO. In essence Microsoft argues that a lower standard, such as used by the USPTO during original prosecution (or patent reexamination) is more appropriate. The case may be the most closely watched patent law question in decades as the ruling could have a game changing impact on the value of patents and patent litigation practices.    

To date, however, Microsoft has not had any success invalidating the ‘449 Patent in patent reexamination.
Continue Reading Microsoft Seeks Director Review of I4I Reexamination Denial

NTP Patent Reexaminations & Key Patent Reissue Cases

With not much going on between holidays, a look forward to 2011 shows some interesting post grant issues teed up at the CAFC.

Oral arguments have been scheduled for In re Tanaka (January 10), In re NTP (February 10), and In re Mostafazadeh (February 11). (CAFC schedule here)

As a reminder In re Tanaka, (on appeal from the BPAI decision of last December) will explore whether or not a reissue application is proper where the only defect identified in the issued patent is the failure to present additional dependent claims.  At the BPAI, the Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent.

Of perhaps greater interest in the patent reissue area is In re Mostafazadeh. This case will explore the boundaries of the recapture rule as it relates to broadening reissues. Specifically, the CAFC will have an opportunity to provide feedback to the USPTO on the continued viability of Ex parte Eggert 67 USPQ2d 1716 (BPAI 2003) in view of North Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). The USPTO has taken the position that Eggert is no longer binding on the Office. As a result, the Office has considered recapture to foreclose presentation of an intermediate claim scope in patent reissue where a broader claim limitation was surrendered in original prosecution.

Finally, the NTP patent reexaminations of NTP v. RIM fame finally get their day in court.
Continue Reading CAFC Slates Patent Reexamination/Reissue Disputes for Early 2011 Resolution

 Year in Review & 2011 Outlook

As I mentioned last week, nothing says “holiday spirit” like a podcast on patent reexamination/reissue.

Recently, I recorded a podcast for LexisNexis discussing the patent reexamination and patent reissue stories of 2010, and looked forward to prominent cases and expected changes in 2011.  Readers of the blog may recognize…

Lear Doctrine Avoided by Metabolite?

In a post last week, it was reported that U.S. patent 4,940,658, the subject Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted) had withstood an ex parte patent reexamination challenge at the USPTO. Specifically, the BPAI reversed the examiner rejection of claims 13, 15-17 and 33 and refused to reconsider their decision in the face of a rare patent examiner request for rehearing (90/008,305).

Aside from the ongoing patent battle raging between Lab Corp. and Metabolite, there is also a contractual dispute before the United States Court of Appeals for the Tenth Circuit involving these same companies. Metabolite is arguing that Lab Corp. unlawfully terminated an earlier licensing agreement. In order to have lawfully terminated their agreement, Metabolite argues that Lab Corp. must prove their products do not infringe the ‘658 Patent, but they have lost this battle at trial. Likewise, Metabolite argues that if Lab Corp is attempting to argue lawful termination based upon patent invalidity (i.e., Lear Doctrine), the BPAI has recently disproven this theory as well.
Continue Reading LabCorp’s Failed Patent Reexamination Challenge At Issue in Contract Dispute

Parallel Patent Reexaminations Given Little Weight at ITC

As detailed in past posts, an ongoing patent reexamination may help defendants stave off an injunction in district court. For example, in Flexiteek v. Plasteak,  (S.D. Fla. 2010) (Cohn, J.), the district court opted to stay the enforcement (order here) of the permanent injunction based upon the status of the related patent reexamination. At the ITC however, patent reexaminations are viewed as a routine occurrence.

As explored in the ITC action initiated by Tessera Inc., In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, 2008 WL 2223426 (Int’l Trade Comm’n May 27, 2008), it is next to impossible to stay an ITC proceeding pending an ongoing patent reexamination. This is due to the ITC’s statutory mandate to conclude investigations within a strict time frame.

Having lost the battle to stay the case, the remaining Tessera defendants cited the existence of the ongoing patent reexamination as a basis to avoid an exclusion order. The defendants asserted, that the public interest analysis required by 19 U.S.C. § 1337 (d)(1) was akin to the factors enumerated in eBay Inc. v. Mer-cExchange, L.L.C., 547 U.S. 388 (2006). In arguing for the Ebay factors, the defendants emphasized that money damages may be more appropriate for a “licensor” such as Tessera and that there would be no irreparable harm.

Yesterday, the CAFC contrasted the principles of equity applied in district courts to the statutorily mandated exclusion order of the ITC in Spansion v. ITC, and affirmed the ITC’s treatment of the ongoing patent reexaminations as largely irrelevant.
Continue Reading Ebay Factors Irrelevant to ITC Exclusion Orders

In re Meyer Denies Late 1.131 Declaration Evidence

Due to the limited prosecution window in patent reexamination compared to regular patent application prosecution, submission of declaration evidence under 37 CFR § 1.131 and/or 37 CFR § 1.132 is far more commonplace. (See some of my June 2010 posts for further discussions on declaration practice).

U.S. Patent 5,501,404 is directed to a manure spreader (who knew one needed anything more than a blog for that). The ‘404 Patent is the subject of ex parte patent reexamination 90/010,007. There were two main disputes during the reexamination prosecution, (1) whether or not a parent of the ‘404 Patent supported an amendment introduced during the reexamination for priority purposes, or, alternatively (2) whether the Patentee could “swear behind” intervening prior art from the date of the CIP application underlying the ‘404 Patent (which included support for this claim feature).

In pursuing issue (2) before the USPTO, the Patentee failed to present antedating declaration evidence under 37 CFR § 1.131 until after final rejection. An Advisory Action issued indicating that the declaration evidence had been entered, but explained that it was deficient with respect to the required diligence showing. Days prior to filing the Notice of Appeal to the BPAI, supplemental declaration evidence was filed. This evidence was not entered – – on appeal the examiner’s rejections were affirmed by the BPAI. The refusal to enter the supplemental declaration evidence was explained by the Board as a petitionable issue, that was within the discretion of the examiner.

The Patentee then pursued their case to the CAFC.
Continue Reading CAFC Sides with USPTO in Patent Reexamination Declaration Dispute

Rare Examiner Request Filed for Patent of LabCorp Fame

U.S. Patent 4,940,658 relates to an assay for Sulfhydryl Amino Acids and methods for detecting and distinguishing Cobalamin and Folic Acid deficiency. This patent previously made headlines as the subject of the 2005 Supreme Court appeal that sought to explore the patentable boundaries of  “natural phenomena.” Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted). Specifically, the defendants argued that the patent related to detecting a natural phenomena, namely, a vitamin B12 deficiency.

In 2006, third party requester General Atomics sought ex parte patent reexamination of the ‘458 Patent.(90/008,305) Of course, as patent reexamination may only consider questions of validity that relate to patents or printed publications, statutory subject matter considerations were never at issue; instead, only prior art rejections were applied in the patent reexamination.

Initially, the USPTO rejected certain claims of the ‘658 Patent, forcing the Patentee to pursue the case to the BPAI (ex parte Competitive Technologies, Inc. and The Trustees of Columbia University (Appeal 2009-005519)). The BPAI reversed the examiner’s rejection of the claims in July of 2009. Once reversed, as per usual, the examiner was ordered to withdraw the rejections, and allow the patent to exit reexamination.

Instead, the examiner opted to file a very rare, request for rehearing.
Continue Reading Examiner Requests BPAI Reconsider Decision to Reverse