Reexamination

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PLI-Logoass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”229″ height=”132″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York  this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors…

 

–E.D. of Texas Defendants Seek to Ride Off Into the Sunset– 

The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation…

deniedass=”alignleft size-thumbnail wp-image-1402″ title=”denied” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/denied-150×150.jpg” alt=”denied” width=”85″ height=”88″ />As first reported by PatentsPostGrant.com in November 2009, the patent reexaminations of NTP vs. RIM infamy were soundly shot down by the BPAI.[1]  In November of 2009, the BPAI began issuing a series of decisions affirming the rejections of the five NTP patents. 

5,436,960 BPAI…

slingass=”alignleft size-full wp-image-1179″ title=”sling” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/sling.jpg” alt=”sling” width=”217″ height=”249″ />As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis.  For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims.  However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic. 

In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed. 

For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification. 
Continue Reading Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I, II and III)”, we discussed using pending reexamination proceedings to support invalidity contentions, prove inequitable conduct, and rebut allegations of willful infringement.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to support and oppose motions for preliminary injunction.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part IV of IV)

bigq copyg class=”alignleft size-full wp-image-1265″ title=”bigq copy” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/bigq-copy.bmp” alt=”bigq copy” width=”218″ height=”176″ />What Exactly is a Substantial New Question of Patentability Anyway?

As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent.  Certainly there are numerous grounds to challenge a patent in a Federal District Court.  However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO.  The appropriate subset is explicitly identified by the reexamination statutes.  Simply stated, proper SNQs must be based on patents and/or printed publications only.  So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.

For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640

In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests.  Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office?
Continue Reading Effectively Presenting a Request for Patent Reexamination(Part II of II)

goodfellas_painting-smallg class=”size-medium wp-image-1043 alignleft” title=”goodfellas_painting-small” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/goodfellas_painting-small-241×300.jpg” alt=”goodfellas_painting-small” width=”241″ height=”300″ />–A Tale of Two Statutes —

When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas.  In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows:  Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? “

When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.

It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications.  Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]

In this regard, MPEP 2258 (II) notes that:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . .  (emphasis added)

The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with
Continue Reading USPTO Reexamination of Means Plus Function Claims

PLI-Logoass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”232″ height=”131″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and…

As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV)