Reexamination

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220px-Wingmanass=”alignleft size-full wp-image-4165″ title=”220px-Wingman” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/220px-Wingman.jpg” alt=”220px-Wingman” width=”220″ height=”177″ />Whether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims.  In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).

Would Solicitor participation in these cases have protected the institutional interests of the BPAI?  The answer is not clear.  However, absent Solicitor participation, the BPAI’s record will be left to speak for itself.
Continue Reading No Interference from USPTO Solicitors at the CAFC?

EchoStar Seeks to Exploit Examiner Comments in Letter to CAFCA few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010.  TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC.  Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal. In their letter (here), EchoStar argues that the reexamination creates additional, substantial open issues regarding infringement. EchoStar argues that TiVo has disclaimed claim scope of several key terms. In arriving at this conclusion, EchoStar attempts to seize on certain examiner language provided in the notice of the intent to issue the reexamination certificate (NIRC, 10/6/10).In the NIRC (here), the examiner explained that:Specifically, Patent owner has now clarified and further defined the meaning of the claim terms “transform object”, “source object”, “sink object”, and “automatic[ally] flow control[led]” in light of the understanding of the terms provided in the ‘389 specification. The examiner now interprets these terms in light of Patent owner’s arguments, and as expressly disclosed in the ‘389 specification. (emphasis added)In their letter, Echostar has focused on the language clarified and further defined as an indication that the USPTO somehow relied upon a disclaimer of claim scope to confirm the TiVo patent.While the examiner explained that the supplemental declaration materials filed by TiVo further clarified and refined previously made arguments (i.e., original declarations), this does not necessarily mean that any disclaimer was made. In fact, knowing full well the impact of any statements made during the patent reexamination on the ongoing dispute with EchoStar, it seems very unlikely that such a disclaimer would exist in fact. Likewise, unless clear and unequivocally made by TiVo in their filings, any examiner comments in the NIRC are not binding on TiVo. Salazar v. Proctor & Gamble Company, 414 F3d. 1342 (Fed. Cir 2005)Of course, the ultimate question of whether or not disclaimer exists is not really important to EchoStar, they would just like to derail the appeal and get a remand, or a reversal based on “additional, substantial open issue

A few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).

With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010.  TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC.  Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal. …
Continue Reading EchoStar Debates TiVo Patent Reexamination Result

Two GraphOn Patents Seemingly Lost, More to Come?In May of this year, a first suit between GraphOn Inc. and Juniper Networks was stayed pending the conclusion of patent reexamination proceedings relating to U.S. Patents 6,061,798, 5,826,014 and 7,028,336. A few weeks back, Juniper Network also was able to secure a stay of the second of the two suits (different GraphOn Patents, U.S. Patents 7,249,378; 7,269, 847; 7,383,573; and 7,424,737 )  pending further patent reexamination proceedings at the USPTO. The stay of the second suit was also entered shortly after the transfer of Texas (The famed Texas Two Step). The two suits relate to network firewall technology as claimed in the GraphOn patents. The dispute between the two companies has been ongoing for several years (prior to transfer to the NDCA related suits were filed in Texas, Delaware and Virginia).In late June, in a very surprising development to say the least, the ‘014 Patent (ex parte patent reexamination 90/009,179) went abandoned for failure to file a compliant appeal brief. A reexamination certificate was subsequently printed in August canceling all 51 claims. GraphOn filed a petition to revive in July, yet as the record stands right now, it appears that the ‘014 patent is finished. (Incidentally, the determination of compliant briefs in ex parte reexamination is now handled by the Board).Fortunately for GraphOn their portfolio consists of several patents…. but so far, those don’t seem to be faring much better.This past Wednesday, the rejection of all claims of the ‘798 Patent (an issued continuation of the ‘014) was affirmed by the BPAI (decision here). In the decision, the Board faults the quality of the submitted declaration evidence, notes that GraphOn did not even bother to Reply to the Examiner’s Answer, and attempts to read features into the claims.  It seems GraphOn is struggling significantly with the patent reexamination and appeal  process.The reexamination of the second group of patents has not yet beg

In May of this year, a first suit between GraphOn Inc. and Juniper Networks was stayed pending the conclusion of patent reexamination proceedings relating to U.S. Patents 6,061,798, 5,826,014 and 7,028,336. A few weeks back, Juniper Network also was able to secure a stay of the second of the two suits (different GraphOn Patents, U.S. Patents 7,249,378; 7,269, 847; 7,383,573; and 7,424,737 )  pending further patent reexamination proceedings at the USPTO. The stay of the second suit was also entered shortly after the transfer of Texas (The famed Texas Two Step). The two suits relate to network firewall technology as claimed in the GraphOn patents. The dispute between the two companies has been ongoing for several years (prior to transfer to the NDCA related suits were filed in Texas, Delaware and Virginia).

In late June, in a very surprising development to say the least, the ‘014 Patent (ex parte patent reexamination 90/009,179) went abandoned…
Continue Reading GraphOn Patent Portfolio Sinking in Patent Reexamination

The Emergence of Patent Reexamination as a Litigation Bargaining Chip As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial. In order to avoid the stay of the litigation, plaintiff SRA was asked to agree to the following conditions:1. Within 15 days of this order, SRA shall narrow its asserted claims to 20. 2. Within 30 days of this order, defendants shall narrow their invalidity contentions to 3 anticipatory references and 3 obviousness combinations per claim. 3. Within 10 days after a claim construction order has been issued, SRA shall narrow its asserted claims to 10 per defendant (no more than 12 total). 4. Within 15 days after a claim construction order has been issued, defendants may amend their invalidity contentions to substitute new anticipatory references or obviousness combinations upon a showing of good cause. To establish good cause, defendants must show why the court’s claim construction requires amendment of their invalidity contentions.Although the above conditions were ultimately proposed by the Court, it appeared that the Defendants had proposed even further limitations. In explaining the denial of the motion to stay, contingent upon the above conditions, the court alluded to further defendant proposals.Moreover, with respect to those claims that survive reexamination, defendants argue that they should not be bound by the results of the reexamination unless SRA agrees to forgo its right to an examiner interview and that they should still be permitted to argue obviousness based on the combination of prior art references that were submitted for reexamination with prior art that was not submitted.While most think of patent reexamination in simple terms as a means to stay a litigation or invalidate patent claims, these are but the most basic of uses of a much more versatile litigation tool. Indeed, patent reexamination that is conducted concurent to litigation has been illustrated by past posts as of great strategic value in pre-trial and post trial applications.  As this new trend in creative motion practice demonstrates, patent reexamination is also bargaining chip defendants are wise to embrace.

As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.

In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial.
Continue Reading Horse Trading: Trends in Stays Pending Reexamination

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Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.

Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as  Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.”  As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.

Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues?
Continue Reading Curing Infringement Issues Through Patent Reexamination?

Creative Motions Undermine Delay PrejudiceEarlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)In TDY Industries Inc., v. Ingersoll Cutting Tool Co., (W.D.P.A) Ingersoll filed a request seeking inter partes patent reexamination of TDY’s U.S. Patent 7,244,519 (95/001,417). The request for patent reexamination was made only two months after filing of the complaint with the court. The defendant moved to stay the case shortly thereafter, but the determination on the reexamination request remained outstanding. To address the issue of prejudicial delay, Ingersoll stipulated to a self imposed restraining order of sorts. Essentially, Ingersoll agreed not to deal in products allegedly covered by the ‘519 Patent for a predetermined time frame. In granting the stay, the court explained the weight given to the offer, noting:Turning to undue prejudice, the Court finds TDY’s complaints substantially mitigated by Ingersoll’s agreement to “no longer make, use, offer to sell, sell, import or distribute any [of the allegedly infringing] products in the United States, until the earlier of: (a) the date on which the [Patent] Examiner issues a Right of Appeal Notice . . . in the pending Reexamination, or (b) September 15, 2013, [i.e.,] 3 years away, a period longer than the average time between the filing of a reexamination request and issuance of a reexamination certificate.”Clearly, it is a rare defendant indeed that would offer a self imposed injunction in favor of a stay. Still, creative undermining of the Patentees most powerful argument, especially with respect to inter partes reexamination, may be a growing tre

Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).

Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)…

Continue Reading Stays Pending Patent Reexamination: Sweetening the Deal

EndAroundThe greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.”
Continue Reading The ITC End-Around District Court Stays Pending Patent Reexamination

Unwary Practitioners Often Inadvertently Surrender Claim Scope in Patent ReexaminationWith so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01But, what difference does it make if the independent claim is amended?The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academ

With so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.

Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.
Continue Reading Card Activation Technologies Tripped Up in Patent Reexamination?

roadblockass=”alignleft size-full wp-image-3880″ title=”roadblock” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/09/roadblock.jpg” alt=”roadblock” width=”203″ height=”144″ />This past Monday the BPAI pointed out that a Patent Holder may not swear behind a patent that claims the same invention, the proper forum for such a priority contest being a patent interference proceeding. The decision, Ex parte Regents of the University of California (“Regents”) (decision here), affirmed-in-part the rejection of U.S. patent No. 5,916,912 in ex parte reexamination.  In particular, the Board held that Regents could not antedate U.S. Patent No. 5,998,474 (“Cavazza”) because the ‘912 patent and Cavazza were claiming the same patentable invention. Applying, 37 C.F.R. 41.203(a), the Board reasoned that the two patents were directed to “the same patentable invention” since a claim of the Regents patent is obvious in view of a claim of Cavazza, and vice versa. This leaves the Regents in a bind, aside from challenging the BPAI decision to the CAFC, how can an interfering patent applied in patent reexamination be overcome?
Continue Reading What to do with an Interfering Patent in Patent Reexamination?

Giving Up What You Never Had

On September 20, 2010, Judge Ward of the Eastern District of Texas stayed the case of Microlinc LLC., v. Intel Corp et al. 2:07-CV-488. The patent at issue, 6,009,488 was asserted in 2005, but the action was voluntarily dismissed at the request of Microlinc to allow a first reexamination to conclude. Once this reexamination was terminated Microlinc reasserted the ‘488 Patent in 2007 against the same defendants. About the same time, Intel sought a second reexamination of the ‘488 Patent. A final rejection was issued in the second reexamination on May 26, 2010. On July 26, 2010, Microlinc filed a response adding 25 new claims.

Judge Ward stayed the case (decision here). While the case is now stayed, in his decision, Judge Ward offered the plaintiff an option to lift the stay that will necessitate the Patent holder give up, well….nothing.
Continue Reading Illusory Sacrifice in Patent Reexamination to Avoid Stay in Marshall Texas?