Reexamination

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DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS?It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:1.     According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and2.    Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111Using  this framework, the application of prosecution history in patent reexamination has been highly inconsistent.Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. ” MPEP 2111.01 (indeed, the appeal record of  95/000/017 extensively analyzed prosecution history in accordance with Phillips).Confusingly, other Board cases that analyze the “reasonableness” of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).I expect either the Board or CAFC to clarify this issue down the road, the sooner the bett

It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.

By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.

It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”…
Continue Reading Inconsistent Claim Interpretation Practices in Patent Reexamination

ar123551342397313When evaluating a request to stay litigation pending reexamination, district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set.

In an recent opinion, U.S. Magistrate Judge Janie S. Mayeron denied defendants’ motion to stay litigation pending ex parte reexamination because, among other reasons, the reexamination proceedings could not streamline the case. J. Blazek SKLO Podebrady s.r.o. v. Burton Int’l Enterprises, Case no. 08-cv-2354 (D. Minn. June 11, 2010).  At first blush, Judge Mayeron’s rationale for denying the stay seemed illogical as it is certainly the case that, cancellation or amendment of the claims in the patents under reexamination could moot issues of validity, enforceability, infringement, and even damages.

Upon closer inspection, however, this case presents an unusual set of facts in that the
Continue Reading Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense

whisper1

In our February series on the use of reexamination evidence in concurrent litigation, specifically “Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV),” we observed that some courts are, at best, ambivalent about the presentation of evidence pertaining to a related patent reexamination for rebutting a charge of willful infringement. Those courts typically express concern that juries may become prejudiced or confused if they learn that the same agency that originally issued the patent — the PTO — has declared that a substantial new question patentability exists or has rejected the patent’s claims.

Notwithstanding those potential problems, a jury in the Eastern District of Texas may soon hear that three claims of the patent-in-suit currently stand rejected in reexamination proceedings.
Continue Reading Jury to Hear Evidence of Patent Reexamination Proceedings

mouse-5 The Harvard “oncomouse” in case you have never heard of it, is a strange little laboratory rodent genetically modified at Harvard (transgenic) to carry human genes.  One of the more infamous uses of this technology is to grow human ears on mice. As no surprise this bit of genetic engineering was patented back in the 80’s and early 90’s (5,925,803 as well as other related patents) setting off quite a debate as to the metes and bounds of patentable subject matter, not only in the U.S., but around the globe. More recently, the ‘803 Patent has been subject to a request for ex parte reexamination. Of particular interest in this request for reexamination is the assertion by the Third Party that the patent is expired. Of course, anyone familiar with patent reexamination realizes that an expired patent may be subject to reexamination if it is still enforceable (i.e., within a 6 year window of expiration). The real surprise here is that the Third Party argued that the ‘803 Patent expired based on an overly broad terminal disclaimer of a parent application. In the filing, the Third Party requested comment from the USPTO on their terminal disclaimer theory; the USPTO surprisingly obliged. In doing so, the USPTO not only ended the reexamination before it started, but may have invited a lawsuit on the Office best fought by industry. 
Continue Reading The Harvard Oncomouse Patent Reexamination, Over Before it Started?

ford

In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI,  (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.

Figure 1 – Trailer Life Magazine’s Spy Photograph

In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist,
Continue Reading Paparazzi Photo Kills Ford Design in Patent Reexamination

connectRecently, we discussed the use of declaration evidence to advance prosecution in patent reexamination, and selecting declarants where concurrent litigation exists together with patent reexamination. In this post we explore a type of declaration commonly encountered in patent reexamination, declarations that attempt to identify objective evidence of non-obviousness.

MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As amendment of claims is not practical in many instances during patent reexamination (i.e., intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. Yet, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively connect this evidence to the claims. Deficient submissions typically fall into two main categories:Continue Reading Connecting Secondary Indicia of Non-obviousness to Claims Undergoing Patent Reexamination

k1610558In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages.  This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to infringers. This past week, such a reexamination misstep was analyzed
Continue Reading Sometimes Confirmed Claims in Patent Reexamination Equal Defeat

kicked outIn last week’s discussion on the topic of declaration usage in patent reexamination, we explained the benefit of such evidence in close cases, illustrated by both the dissent and majority comments on the limited evidence of record in ex parte Rehrig Pacific Company

Several days after the Rehrig Pacific decision, the BPAI once again emphasized the importance of such evidence.  On May 28, 2010, in inter partes reexamination 95/000,008 (Shimano v. Rolf Dietrich BPAI 2010-001847), the Board analyzed the issue of written support relative to newly claimed static tension ranges of a bicycle rim. With regard to the new limitation, explicit support did not exist in the specification, but the Patentee argued that one of skill in the art would nevertheless recognize such disclosure as provided in the specification.  In rejecting this argument
Continue Reading Lack of Evidence in Patent Reexamination