Reexamination

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horiz_2stepAs discussed previously, defendants accused of patent infringement that are hauled before a plaintiff friendly  Texas court, not surprisingly, tend to seek transfer to a less favorable venue where possible. Often times, the “favorability” of an alternative venue may be driven in part by the tendencies of the alternative venue to stay a litigation pending patent reexamination. I previously identified this tactic as the “New Texas Two-Step.”

After a few years of dancing around a first plaintiff initiated suit in Texas, followed by a second defendant initiated suit in Virginia (later consolidated to Texas), Juniper Networks was able to successfully execute the Texas Two Step.  On Monday, the Northern District of California (receiving the dispute by transfer from Texas) stayed the dispute between Juniper Networks and Graphon Corp pending the outcome of patent reexamination.
Continue Reading Juniper Network’s Texas Two Step a Success

Confidential Information & Claim Drafting

As we discussed last March, the Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation. In our earlier post we explained that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee. In Delaware, the protective order issue has been viewed differently. Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination. …
Continue Reading Delaware District Court Protective Order Practice

JetsThank god football is back, where else but NFL week 1 does blind faith reign supreme and delusional face painters make crazy predictions about future outcomes….but enough about Dallas Cowboy fans. Occasionally, in the otherwise mundane world of patent reexamination, a press release is issued that is so self serving one can only conclude the author spends time face painting on Sundays.

As discussed previously, with so many high profile patent litigations subject to concurrent patent reexamination, it is quite common for self serving press releases to be issued by the participating parties. For public companies, SEC oversight and shareholder law suits tend to keep the release very factual and straightforward. Other less accountable organizations, tend to be a bit more aggressive, like my new all time favorite, Mercury Cable.

Not only is Mercury Cable seemingly guaranteeing a win, they also curiously point out that most patent reexaminations result in confirmed claims. USPTO statistics to the contrary be damned!
Continue Reading Mercury Cable & Patent Reexamination Trash Talk

flailing-swimmer-300x220The seemingly never ending Microsoft v. i4i dispute continued on to the doorstep of the Supreme Court last week. In 2009, Microsoft was found to have infringed i4i’s 5,787,449 patent, which allegedly claims certain XML translation features of Microsoft Word. An appeal to the CAFC earlier this year was unsuccessful. On August 27th, Microsoft filed a petition for certiorari questioning the lower court’s use of the clear and convincing standard relative to art not before the USPTO during prosecution of the original patent application.

Along the way, Microsoft sought ex parte reexamination of the ‘449 Patent (90/010,347), largely as an afterthought to hedge against a willfulness finding. Not surprisingly, since the request ignored definitions of certain claim terms of the ‘449 Patent specification, the reexamination attempt was unsuccessful and all claims exited reexamination in July of this year. With the trail now over, and appeal options exhausted (save the last ditch appeal to the Supreme Court), it would seem that at least the patent reexamination chapter of this saga was complete.

Yet, as reported by IPWatchdog yesterday, Microsoft has filed a second request for ex parte reexamination of the ‘449 patent (90/011,198) just last Tuesday. So, what exactly is Microsoft hoping to accomplish? 
Continue Reading Microsoft Files Another Patent Reexamination Request Against i4i

Expanded BPAI Panel Shoots Down Repackaged SNQSince In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street.U.S. Patent 6,780,079 is the subject of litigation styled MuzzyProducts Corporation v. Primos Inc., U.S. District Court of Georgia 4:05cv182. This case was stayed in 2007 pending the outcome of the reexamination, 90/008,081. The ‘079 Patent relates to a devices used in hunting for attracting game (game calling).Original ProsecutionDuring the original examination of the ‘868 application which eventually issued as the ‘079 patent, the claims were rejected under 35 U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091 “Musacchia”. The Examiner stated that while Musacchia does not disclose a hunting device for producing sounds that has a unitary construction, “unitary construction of the hunting device would have been obvious to one of ordinary skill in the art, since this would aid in the portability and usage of the device.”In response, the inventor, Mr. John Musacchia Jr., (prior art invented by his father) filed a Declaration seeking to establish non-obviousness through long-felt need.After extensive prosecution, the original Examiner maintained the rejection of the claims over Musacchia stating that “Musacchia discloses the claimed invention except for the game call device constructed as one piece” and that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to form the game call device as one piece, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).”After further prosecution, the Applicant appealed to the Board. The original Board panel reversed the original Examiner’s rejection stating that there is no per se rule that “forming several pieces integrally as a one-piece structure would have been obvious . . . [,]” and “in this case, one must determine if it would have been obvious to one of ordinary skill in the art at the time the invention was made to make Musacchia’s separate call and platform as a one-piece structure.” Subsequently, the application was then allowed by the examiner.Request for ReexaminationIn the request for reexamination, the Requester argued that the Declaration filed during the prosecution of the ‘079 patent was only considered as to whether it demonstrated long-felt need, and not considered by either the original Examiner or the original Board panel as including admissions.The USPTO adopted this reasoning explaining the admissions to be statements made by the Patent Owner in his declaration and remarks that identify the long-unfelt need. Specifically, these remarks explain that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.In this regard, the Office stated that, when considered as admissions, the statements of the Declarationprovide evidence of obviousness, which was specifically pointed out as missing in the prior examination, and therefore, cast Musacchia ‘091 in a new light. The teachings of Musacchia ‘091 considered in conjunction with the admissions are a new question of patentability not previously considered. As such, the teachings of Musacchia ‘091, in conjunction with the admissions in the record, raise a substantial new question of patentability.Board DecisionThe Board remanded (decision here) the reexamination back to the Central Reexamination Unit for termination explaining that:While the CRU Examiner may be correct in asserting that the original Examiner and the previous Board panel considered the statements in the Declaration only in the context of long-felt need, these statements do not alter the purpose for which the CRU Examiner now relies on the Musacchia reference for finding the existence of a SNQ. In particular, the CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a “new light,” the CRU Examiner’s position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.PPG Comment : The Requester gets an “A” for effort.Essentially, this reexamination was pursued to leverage the perceived change in obviousness standards caused KSR International Co. v. Teleflex Inc (‘079 Patent issued pre-KSR). Ths request was submitted under the guise of declaration admissions in the hopes that applying KSR to the same art would yield different results. Of course, MPEP 2216 makes it very clear that KSR does not impact the SNQ analysis.**Fortunately for the patent owner, as of June 25, 2010, the Board may now properly review the examiner’s determination that a SNQ exists. Prior to June 25, 2010 the Patent Owner’s argument would have been rejected by the BPAI as a petitionable issue.

Since In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.

Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street.
Continue Reading Patent Reexamination Effectively Terminated by BPAI for Lack of SNQ

Did the Patent Holder Miss the Boat on Claim Interpretation?On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.At issue in the appeal was a single independent claim, claim 1 below (as amended): 1. (As Amended) A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising:a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, andtime delay means for automatically extinguishing said light source after a fixed time delay following the energization of said light source by the electrical deenergization of said light source.  The Office identified the time delay means as being satisfied by the Mallory reference (Fig. 1 below)PPG Comment: Rather than arguing that the “time delay means” of the claim was required to be interpreted under 35 USC § 112 6th paragraph (i.e., means plus function) and that the circuit structure of the specification was nowhere near an equivalent structure to the mechanical spring/bellows arrangement of Mallory, the Patent Holder instead argued the reference was non-analogous art, and could not be bodily incorporated into a watch. Giving the Patent Holder the benefit of the doubt, perhaps the aversion to 112 6th was litigation inspired. For example, the solenoid/capacitive based circuitry of the patent specification, although described as exemplary, could limit infringement options.While the BPAI cannot be blamed for not making the Patent Holder’ s argument for him, I am left wondering whether a statutorily mandated claim construction can be ignored regardless of the implied “waiver” of such arguments in the brief? As pointed out repeatedly on this blog, the USPTO could save Patent Holders a lot of grief, and conserve Office resources by requiring third party requesters to properly address means-plus-function claims, upfront, in their requests for reexamination.[1] Patent Owner sued Casio Computer in 1998 on this patent Rhine v. Casio Inc., Inc., No. 3:96CV7524 (N.D. Ohio May 12, 1998). After a remand from the CAFC, the case was dismissed in 2005 without prejudice in light of the reexaminati

On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.

In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.

While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.

Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.
Continue Reading 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination

blindersOn August 20, 2010, a motion to stay the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc. (0-09-cv-01594) (NDM) pending the outcome of a parallel patent reexamination was denied. At issue in the litigation are three of 3M’s patents relating to RFID technology, namely 6,232,870, 6,486,780 and 6,857,568. Envisionware requested inter partes reexamination of the ‘780 and ‘568 Patents. Curiously, since the third patent, the ‘870 Patent does not qualify for inter partes reexamination, reexamination of this patent was not sought at all. A non-final office action rejecting  the ’568 Patent claims was issued by the USPTO, the ‘780 Reexamination has yet to begin. On August 2, 2010, Envisionware filed the motion to stay the litigation.

The court denied the motion to stay the litigation citing familiar factors, noting that (1) the stay would prejudice the plaintiff, (2) the stay would not likely simplify the issues in litigation and facilitate trial, and (3) discovery will soon be complete. Yet, clearly, of more interest to the court was why Envisionware chose to ignore the ‘870 Patent altogether.
Continue Reading Rubbing the Court the Wrong Way in Seeking a Stay Pending Patent Reexamination

Silence in Original Prosecution History Used Against Patent OwnerAs discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.Yet another interesting BPAI case that appears destined for the CA

As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.

Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)…
Continue Reading Estoppel by Inaction, BPAI Forecloses Argument in Patent Reexamination

Monsanto Co. v. Geerston Seed Farms

In the recent Supreme Court case of Monsanto Co. v. Geertson Seed Farms, the Court shed some additional light on how district courts should assess the factors required to determine whether to impose an injunction.  The Monsanto decision did not concern patents, however it raises some interesting issues that would apply to injunctions in the patent context, particularly when a patent is found to be infringed in a district court litigation, but is also under concurrent reexamination.  See our earlier discussion of the use of patent reexamination to defeat an injunction for more information on this issue. 

Specifically, the Monsanto decision noted that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course.  If a less drastic remedy … was sufficient to redress respondents’ injury, no recourse to the additional and extraordinary relief of an injunction was warranted.”  Monsanto Co. v. Geertson Seed Farms, 130 S. Ct. 2743, 177 L. Ed. 2d 461, 481 (June 21, 2010).

In Monsanto, applying the traditional four-factor test for injunctions, the Supreme Court found that the District Court had abused its discretion in enjoining a federal administrative agency from deregulating a species of plant pending the completion of an environmental impact statement.  Id. at 481.  The Court felt that simply vacating the federal administrative entity’s decision could redress Respondents’ injury, thus it was unnecessary to resort to the “additional and extraordinary relief of an injunction.”  Id.

The potential effect of Monsanto on patent litigation involving concurrent reexamination was not lost on patent practitioners.  Just a few short weeks after the decision in Monsanto, in an amicus brief to the Federal Circuit, Verizon Communications, called attention to Monsanto’s aversion to injunctions.  Br. for Verizon Commc’n at 4, Tivo, Inc. v. Echostar Corp., No. 2009-1374 (Fed. Cir. July 2, 2010).
Continue Reading The Equities of an Injunction Concurrent with Patent Reexamination

TripAs discussed last week, patent reexamination is often leveraged concurrent with district court litigation for strategic purposes. As district court pendencies continue to rise, even in districts known for relatively speedy resolutions, an early filed reexamination will very likely mature in time to provide additional fodder for claim construction. (Markman). In some cases, even where the reexamination concludes favorably to the Patent Holder, the discussion in the reexamination prosecution history may still carry the day.

Last week, a Markman Order was issued in Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., Civ. No.09-72-SLR (July 26, 2010) (More info on the Sigram Schindler patent reexamination is found here)

Interestingly, in the Markman Order, Sigram Schindler is called out by the Court for taking inconsistent positions before the USPTO in patent reexamination.
Continue Reading Arguments in Patent Reexamination Trip Up Sigram Schindler