Reexamination

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waiveBPAI Affirms Claims of Expired Patent in Ex Parte Reexamination

The rejection of all claims (save 25, which was confirmed) of expired Patent 4,925,294, (hereinafter, “‘294 Patent”) owned by Three-Dimensional Media Group LTD., was affirmed by the BPAI on Monday. In affirming the rejection, at issue in the appeal was the meaning of “3-D” as recited in the claims of the ‘294 Patent.

The Patent Holder took the position that the term “3-D” was to be accorded a special meaning. In this regard, the Patent Holder claimed that at the time of filing the Applicant was being their own lexicographer MPEP 2111.01 (IV). In support of this assertion, the Patent Holder presented declaration evidence from persons skilled in the art that identified the meaning of “3-D,” in the context of the ‘294 Patent, as defining stereoscopic 3-D.

The BPAI rejected the Patent Holder definition and declaration evidence as inconsistent with the specification.

Since the Board found that “3-D” was not limited to only stereoscopic 3-D as advanced by the Patent Holder, the majority refused to provide an explicit plain meaning construction of 3-D. Instead the majority explained that by advancing the special (i.e., Applicant being their own lexicographer) definition, the Patent Holder did not dispute the plain meaning of “3-D”, and had therefore waived any right to dispute plain meaning. (citing Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)). As a result, the claim term “3-D” was defined inferentially, that is to say the term was identified as being broader than the Patent Holder’s asserted definition, thus met by the art of record.

Yet, can such a fundamental exercise as a plain meaning claim construction be waived, especially for an expired patent that must follow the Papst-Motoren claim interpretation standard to preserve validity? 
Continue Reading BPAI Applies an Implied Claim Construction in Patent Reexamination Appeal

(click to enlarge embedded images)Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. Illustrated below is a comparison of reexamination request rates (non-anonymous) for U.S. vs. Japanese filers. To the untrained eye, the relative filing rates seem entirely logical for a U.S. based, intellectual property right. Yet, when considering that the vast majority of the top patent filers in the U.S. are in fact Japanese companies, domestic dominance in patent reexamination is especially surprising.Clearly, U.S. requests for patent reexamination significantly outpace Japanese requests (including both ex parte and inter partes requests). Indeed, when the chart above is filtered to exclude those Requesters initiating patent reexamination of their own patents (not uncommon for Japanese filers), the contrast between the two filing rates is all the more stark. Certainly, some anonymous reexamination requests (ex parte) may be originated by Japanese filers, yet, this statistic would not be at all significant in my experience.So, why aren’t the Japanese embracing the offensive use of patent reexamination to the extent of U.S. companies?It may be that past prejudices still linger in Japan as to the effectiveness and reliability of patent reexamination at the USPTO. Prior to changes in the law of patent reexamination that created inter partes reexamination in 1999, (AIPA of 2002, In re Swanson), and changes to the handling of reexaminations internal to the USPTO (Central Reexamination Unit), patent reexamination was universally viewed as a fruitless exercise.In addition to the poor track record of past patent reexamination practices at the PTO, historically, Japanese companies are more likely to settle disagreements with competitors by cross-license rather than by overt, offensive actions. Indeed, due to the sheer size of their patent portfolios, Japanese companies are unlikely to have had much negative experience being attacked in patent reexamination by competitors (see below). Thus, there appears to be a general unfamiliarity with the offensive value of patent reexamination.Still, Japanese companies are also targeted by “patent trolls” on a regular basis. In this respect, the misfortunes of Japanese companies are no different than U.S. companies. As a result, Japanese companies are just as likely to benefit from some of the strategic opportunities  offensive patent reexamination has to offer.Perhaps once the changed landscape of patent reexamination in the U.S is widely appreciated in Japan, the Japanese filing rate will more closely track the U.S. filing ra

Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.

Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. …
Continue Reading U.S. Based Filers Dominate Patent Reexamination

c13The relevance of original patent application prosecution history in patent reexamination remains an unsettled issue at the USPTO. As we discussed last month, the MPEP mandates the application of Phillips v. AWH Corp., 415 F.3d 1303; (Fed. Cir. 2005) (en banc) with regard to according a plain meaning to claim terms.Yet the broadest reasonable interpretation (BRI) looks exclusively at the specification.

Last week, the BPAI addressed the use of prosecution history in according a plain meaning in Ex parte Team Worldwide Corporation (Appeal 2010-002223). In doing so, the Board reversed a rejection applied in reexamination based upon the plain meaning of “body.” In the Patentee’s brief, it was pointed out that the original patent application examiner advanced a similar understanding of the term “body” as that argued by the Patentee in the later patent reexamination. While the Board ultimately adopted the Patentee interpretation, it refused to consider the prosecution history, explaining:
Continue Reading Examiner Comments in Prosecution History Discounted as Unskilled?

 

24529214er6Threat of Injunction Dissolves in Flexiteek Litigation

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as an avenue to establish objectively reasonable behavior for use in preventing a willfulness finding. (see e.g., the yesterday’s Fairchild Semiconductor press release). Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional fodder for claim construction, or to demonstrate the materiality of a reference subject to an inequitable conduct defense.

Post-trial (damage control) on the other hand, is a litigation inspired use of patent reexamination that seeks to undo the damage inflicted by the ruling of the district court.
Continue Reading Patent Reexamination as a Form of Litigation Damage Control

reexampendency

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One of the threshold questions in considering patent reexamination, whether a patent owner, or third party is:

How long will it take?

This question is also the subject of significant debate when litigants in a concurrent district court proceeding argue for/against staying the proceeding. Defendants will often point to the published PTO statistics which identify a 24-28 month pendency to conclusion (NIRC). Conversely, Patentee’s point out that these published number do not account for appeal processing. As can be seen from the chart above, reexaminations that are contested through to appeal, are taking roughly 5 years (ex parte or inter partes). Thus, it is quite disingenuous for defendants
Continue Reading How Long Does Patent Reexamination Really Take?

good-enough3Last Friday, the BPAI issued a decision reversing all rejections in the ex parte reexamination appeal of U.S. Patent 6,513,042. The patent is owned by Test.com and is directed to methods of on-line testing of students (test-takers). The patent was challenged back in April 5, 2006 by the Electronic Frontier Foundation.

The primary issue in this appeal was whether or not antedating declarations (swear behind) required all inventor signatures, or whether or not the declarations can be executed by a representative of the Patent Owner alone. The examiner pointed to aspects of MPEP 715.04 that seemed to imply that all inventors must sign
Continue Reading Test.Com Reexamination Concludes with BPAI Reversal

080526155300-largeass=”alignleft” src=”http://www.bioresearchnews.com/wp-content/uploads/2009/09/080526155300-large-300×225.jpg” alt=”080526155300-large” width=”213″ height=”185″ />The USPTO has recently upheld Genetic Technologies Ltd.’s (GTG’s) patent for non-coding DNA technologies.  U.S. Patent No. 5,612,179 titled “Intron sequence analysis method for detection of adjacent locus alleles as haplotypes” claims a method for facilitating the detection of specific gene variations.

The third party initiated ex parte re-examination Control No. 90/010,318, was filed on October, 15, 2008 requesting that each of claims 26-32 be found invalid in view of a new reference, which was not previously cited in the prosecution of the ‘179 patent; namely a printed publication titled “Comparison of Multiple HLA-A Alleles at the DNA Level by Using Southern Blotting and HLAA-A-Specific Probes” by Beverly Koller et al. (“Koller I”).  The request submitted that Koller I raised a substantial new question of patentability and renders claims 26-30 and 32 of the ‘179 patent invalid as anticipated under § 102(b) and claim 31 invalid under § 103(a).  The request further argued that Koller I discloses characterizing the alleles of the multi-allelic HLA-A genetic locus using polymorphisms found in non-coding regions of that locus, including polymorphisms in introns and polymorphisms in flanking regions of the HLA-A locus.

In a reply filed July 24, 2009, GTG argued
Continue Reading Genetic Technologies Ltd.’s Non-coding DNA Patent Upheld on Reexamination

Smoke-N-Mirrors_whiteThe Death Rattle of a Troll

As we detailed previously, the NTP patent portfolio has been eviscerated in patent reexamination with over 2200 claims rejected across 8 patents.  All 8 patents are now on appeal to the CAFC, based on my reading of the rejections, it appears unlikely that NTP will be successful in reversing the applied rejections. Much of NTP’s arguments deal with the proper interpretation of claims in patent reexamination, NTP argues that the district court Markman is controlling rather than a broadest reasonable interpretation used by the USPTO. Of course, this argument has been rejected by the CAFC consistently over the years. In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007); and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007). Another substantial component of their arguments is that a certain printed publication (Telenor) was falsified, and does not in fact qualify as prior art; to date this argument has fallen on deaf ears.

As a result of the reexaminations, initiated by both the Director of the USPTO and Research in Motion (RIM), only 36 original claims were confirmed. A single one of these claims, claim 15 of the 960 patent, was held not invalid and infringed by the CAFC in the earlier RIM dispute (method claims 32 and 34 while found infringed at trial were overturned at the CAFC under 35 USC 271 (f)). So, one would expect that with roughly 2% of the earlier claim set still intact, and the entire portfolio set to expire in 2012, that NTP would quietly fade away. Yet, NTP has initiated yet another suit (complaint against Apple here) just last Thursday, perhaps in the hopes of securing further settlements prior to the final CAFC decisions. In doing so, NTP has filed a complaint referencing patents that may be canceled by the CAFC in a matter of months, and has referenced claims added in patent reexamination that do not yet exist as an enforceable property right.
Continue Reading NTP’s Last Stand: The Remnants of Patent Reexamination

80px-Baseball_umpire_2004ass=”alignleft size-full wp-image-3003″ title=”80px-Baseball_umpire_2004″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/07/80px-Baseball_umpire_2004.jpg” alt=”80px-Baseball_umpire_2004″ width=”80″ height=”120″ />In the world of pharmaceuticals, every day counts.  Indeed, when the subject matter is a block-buster drug like Bristol-Myers/Sanofi’s anti-blood clot drug Plavix® every day of U.S. sales averages nearly $15.5 million dollars (reported U.S. sales for 2009 of $5.6 billion).  So, it comes as no surprise that Apotex Inc., a Canadian manufacturer of a generic version of the drug, refuses to sit on the side-lines waiting for the Plavix® patent (U.S. 4,847,265) to expire.  However, the playing field has not been so kind to Apotex.
Continue Reading Three Strikes, You’re Out!? Apotex’s Latest Attempt to Invalidate the PLAVIX® Patent Denied by USPTO

chanceIn patent application prosecution, patent owners may  file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37 CFR 1.114.  However, these mechanisms are not available in patent reexamination. There may be occasions when additional prosecution may be beneficial in reexamination.  For example, in certain situations special dispatch may be served by the submission of new evidence, prior art,  or amendments. So, is a final action the end of the line?
Continue Reading Petitions Requesting Continued Reexamination (RCR)