Reexamination

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Patent owners face a dilemma when they are involved in reexamination proceedings with concurrent patent litigation. They may become aware of potentially material information during litigation that is covered by a protective order. Yet they have a duty to the USPTO to disclose information known to be material regardless of the source of such information.…

The Impact of the Pending Reexamination on i4i Limited Partnership v. Microsoft (E.D. Tx)

i4i filed suit against Microsoft back in March of 2007 in Texas for infringing U.S. Patent 5,787,449, relating to certain XML data structures.  Faced with an injunction at the conclusion of trial in August of 2009, Microsoft was granted an emergency…

In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.  Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.  This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.

On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that
Continue Reading E.D. VA. Declines Sigram Schindler’s Bid to Revisit Options for Review of BPAI Decisions in Ex Parte Reexamination

On December 15, 2009 the USPTO issued a ‘Notice of Intent to Issue an Ex Parte Reexamination Certificate’ confirming the patentability of Merck’s billion dollar Singulair patent, U.S. 5,565,473.  This development effectively concludes the reexamination of the Singulair patent.  In initiating the reexamination, the USPTO issued a single nonstatutory obviousness-type double patenting reexamination rejection.  Double patenting rejections relate to the ability of a Patent Holder to obtain multiple patents on obvious variations of a single invention.  This rejection, if maintained by the Office would not have invalidated the patent, but instead, could have potentially shortened the term of the Singulair patent.  However, the rejection was withdrawn by the USPTO.

The reexamination was initiated by a third party, Article One.  Article One claimed to have uncovered
Continue Reading Singulair Reexamination Advances to Favorable Conclusion

On October 30, 2009, in Ex parte Senju Metal Industry Co. the Board of Patent Appeals and Interferences (“BPAI”) affirmed a rejection of non-original patent claims in a reexamination proceeding directed to soldering flux for soldering elements. As a predicate to its decision, the BPAI explained the rationale behind application of the broadest reasonable interpretation…

The face of patent litigation in the U.S. has evolved greatly in the last 5 years with respect to patent reexamination. For patent litigators, throughout the U.S. and especially the Northern District of Illinois, the emergence of this now seemingly reliable strategic option is an important case management consideration. Indeed, if not adequately considered in…

Part 1 of this series focused on the importance of a good prior art search prior to filing a request for inter partes reexamination.  Part 2 examines the exceptions to the estoppel provisions of § 315(c).  Specifically, this blog entry identifies situations in which a party might still be able to contest in litigation the validity of a patent that was the target of an unsuccessful request for inter partes reexamination.
Continue Reading Is The Estoppel Effect of Inter Partes Reexamination a Valid Deterrent to Filing? (PART 2 OF 2)

The estoppel consequences of inter partes reexamination are set forth in 35 U.S.C. §§ 315(c) and 317(b) as well as the uncodified provision of § 4607 of P.L. 106-113.  This blog entry will focus on § 315(c).  A third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).  A few basic considerations can help an accused infringer minimize, if not eliminate, the negative effects of estoppel and still reap the benefits of inter partes reexamination.
Continue Reading IS THE ESTOPPEL EFFECT OF INTER PARTES REEXAMINATION A VALID DETERRENT TO FILING? (PART 1 OF 2)

–Third Party Tactics in Reexamination —

Part II of our discussion on 2282/2686  Previously, we analyzed Patent Owner compliance with MPEP 2282/2686 in patent reexamination in the wake of Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir. 2009).  Specifically, the previous post explored the Patent Owner’s duty to notify the Office of concurrent proceedings (2282 for ex parte, 2686 for inter partes).   In this installment, we explore MPEP 2282/2686 relative to the duty to notify the Office of external proceedings, such as a district court litigation involving the patent at issue.   For example, 2282 provides:  Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. (emphasis added) The lack of ability to participate in an ongoing ex parte reexamination is deemed a significant drawback
Continue Reading The Evolution of MPEP 2282/2686

On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes reexamination of U. S. Patent No. 6,869,779 (“the ‘799 patent”).  Originally, Troll Busters named itself as both the sole real party in interest and the third party requester.  However, as the PTO became aware of Troll Buster’s website, http://www.troll-busters.com, questions arose as to whether the actual real party in interest was correctly identified as required by 35 U.S.C. § 311(b)(1) and 37 C.F.R. 1.915(b)(8). On their website, Troll Busters proclaims that “Troll Busters invalidates patents, not just any patents but patents being asserted by patent trolls, those ugly beasts who try to dominate the innovations of others….Troll Busters takes aim and fires in our own name.  The patent Troll will never know who or how many are behind the ‘hit’.”
Continue Reading IN RE TROLL BUSTERS BEWARE: FAILURE TO DISCLOSE REAL PARTY IN INTEREST WHEN FILING AN INTER PARTES REEXAMINATION