Reexamination

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As noted in our post yesterday, prior to their Memorial Day break, the Federal Circuit issued two decisions touching upon patent reexamination practice, the second decision is discussed below.In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:An ultimately final rejection of the claims by the PTO, would fatally undermine the legal presumption of validity of the ‘737 patent and would be sufficient by itself to moot this entire portion of the appeal and warrant affirmation of the district court’s finding of invalidity.  However, the ex parte reexamination has not yet been completely resolved.Reexamination of the ‘737 Patent was ordered December 22, 2008 (Control No. 90/010,311, request filed October 10, 2008). On May 5, 2009 a first Office Action was mailed. On July 6, 2009 a response by the Patent Owner to the first Office Action was filed. On December 23, 2009 the final Office Action was mailed containing the final rejection of claims 1-6 of the ‘737 Patent.  A Notice of Appeal was February 23, 2010.  An Appeal Brief was filed April 23, 2010 by the Patent Owner. In other words, the reexamination spanned 18 months from initial request to appeal.Interestingly, the concurrent litigation was initiated by Dow Jones (declaratory judgment) in June of 2006.  So, patent reexamination was not sought until some 28 months later in October 2008. With the litigation out in front of the reexamination by some 28 months, how can litigants realistically expect the USPTO to overtake the litigation? Simply filing the reexamination request in a timely fashion would have very likely avoided the necessity for the CAFC appeal.Yet, the late filing at issue in this case is not at all exceptional. Defendants routinely opt to wait until an adverse Markman ruling before seeking reexamination. Of course, when the USPTO does not make up for the REQUESTER’S DELAY, it is the Office that is faulted.When all else fails, blame the governme

In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).

The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:

An ultimately final rejection of the claims by the PTO, would fatally undermine…
Continue Reading The Risk of Delaying Your Request For Patent Reexamination

band-aid Last Friday two decisions of the Federal Circuit touched upon patent reexamination practices.  In this post we will examine the first decision, Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc./Shanghai Meihao Electric Inc. v. Leviton Manufacturing Company, Inc. In this decision, the question of whether or not inequitable conduct may be cured in a subsequent, post-grant proceeding of the USPTO was considered. The question before the CAFC in Levitton was whether or not a summary judgment finding of inequitable conduct in the district court should stand. Perhaps, being overly cautious in view of the pending en banc review in Theresense, Inc. v. Becton Dickinson and Co., and indicating that summary judgment of inequitable conduct is the rare case, the court reversed the lower court. Confusingly however, the majority indicated that conduct during patent reexamination may be indicative of a “good faith” intent.
Continue Reading Can Inequitable Conduct be Cured Via Patent Reexamination?

Silversea_Golf_Ball_Cup_squareAs pointed out in our post on shielding declarants from litigation discovery in patent reexamination, the submission of declaration evidence is quite commonplace in patent reexamination as compared to application prosecution. Last week the Board of Patent Appeals & Interferences (BPAI) issued two decisions affirming rejections of patents under reexamination in which declaration evidence, or the lack thereof was outcome determinative. In this post we will discuss the first case, ex parte Rehrig Pacific Company

In ex parte Rehrig Pacific Company, had declaration evidence been submitted, the outcome may have been very different.

In this appeal, the final rejection in ex parte patent reexamination 90/006,283 of claims 25-35 and 53-56 was considered by the BPAI. A key consideration in applying the art to the claims was whether or not the claim term “top frame” or “top frame assembly” was different from the pallet structure of the prior art (from the perspective of one of ordinary skill in the art). No declaration evidence from one of skilled in the art was presented on this key issue.
Continue Reading Close Calls: Declaration Practice in Patent Reexamination

 

thinkingRejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The ‘802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.

The BPAI affirmed the rejection of method claims 12-15 of the ‘802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed…kinda
Continue Reading Failure to Identify Specification Structure a Non-Starter for BPAI

USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner…

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

anti-ms2As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable…
Continue Reading Microsoft Just can’t Catch a Break in Patent Reexamination

clippy_buttonsAs has been widely reported this week, U.S. Patent No: 5,787,499 has been confirmed by the USPTO in ex parte reexamination 90/010,347. The patent has been widely reported as impacting the popular Microsoft Word software, and the subject of the dispute between i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx no. 07-CV-113). The favorable termination of the reexamination is not very surprising to those following the case as it is clear Microsoft’s use of reexamination in this case was to win a limited battle, not the war.

In our earlier post on the i4i patent reexamination, we noted that the request for reexamination was filed in November 2008. The request was granted in early 2009. Despite the fact that the Texas suit was initiated in early 2007, a request for reexamination was not filed until some 20 months later. In Texas, stays are not as commonly granted for patent reexaminations, certainly not to the extent of some of the more extreme districts. As such, it appears as though Microsoft determined the odds of obtaining a stay pending reexamination slim, and chose to follow the traditional litigation path; that is, right up until trial.

Based upon the briefing, it appears as though
Continue Reading Microsoft’s Late Use of Patent Reexamination in the i4i Dispute

It would be so nice if something made sense for a change — Alice (in Wonderland)

Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851).  Claim 1 recites the following elements:

A portable computer unit comprising:
(a) a portable computer housing;
(b) computer means positioned. . .
(c) flat panel display means interfaced to . . .
(e) closure panel means having. . .
. . .said computer housing means and said closure panel means
incorporating electrical connecting means adapted to . . . (emphasis added)

Curiously, the Patent Owner took the position that ONLY the electrical connecting means invoked 35 U.S.C. § 112 6th paragraph (i.e., means-plus-function-element). In other words, even though most other claim elements used the same style of “means” language, these features were somehow different.[1] Understandably, the examiner was perplexed as to the rationale for the distinction. As a result, it appeared that the Examiner instead applied a broadest reasonable interpretation to all of the elements that recited “means” language.

Although, in the end, the BPAI affirmed the examiner’s rejection, the decision was based on a means-pus-function interpretation.  In the decision, the BPAI noted at page 3:

The examiner has a point that it is hard to discern any principled difference between the way “means” is used in the claim such that one skilled in the art would understand that only one such use invokes paragraph 6. The ordinary remedy for such confusion is to reject the claim under 35 U.S.C. 112(2) for indefiniteness. The Office does not reject original patent claims in reexamination under § 112, however.

Next, in affirming the Examiner’s rejection of claim 1, the BPAI analyzed the claims under 35 USC § 112 anyway.
Continue Reading The Patent Reexamination Paradox of 35 USC 112

arrow-pointing-two-directions-400x400Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal
Continue Reading District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)

In re Suitco Surface, Inc. (Fed. Cir. 2010)

Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.

As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.

In reversing the BPAI, the CAFC noted that:

“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”

The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”

While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because…
Continue Reading CAFC Applies The Wrong Claim Interpretation Standard in Patent Reexamination