Reexamination

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Working Patent Reexamination Developments Into the Appeal Record

Previously, I discussed how an appellant sought relief at the CAFC from an earlier Markman Order under Fed. R. Civ. P. 60(b). The Appellant argued on appeal that a recently concluded ex parte patent reexamination of the patent at issue constituted new evidence requiring relief from the earlier decision. The appellant theorized that the USPTO’s analysis as to claim scope should carry significant weight, and were contrary to the court’s earlier Markman and SJ findings. While the CAFC accepted the argument under Rule 60, they ultimately found for the Appellee.

Recently, yet another appeal rule was leveraged to inform the CAFC of USPTO findings in patent reexamination.
Continue Reading Getting the CAFC to Take Note of Your Patent Reexamination

Examination Guidelines & Reexamination Determination Issued

Last week, the USPTO issued examination guidelines in light of the ruling in Mayo v. Prometheus this past March. The guidelines are entitled “2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature. ” (here) The notice explains that the new guidelines will primarily apply to Art Unit 1600, and supersede the initial memo issued by the USPTO to the Examining Corps. on March 21, 2012.

As a reminder, this notice is directed to patent examination, not reexamination. Patentable subject matter issues may not serve as a basis for patent reexamination. There is currently no vehicle (at least until September 16, 2012) for a patent challenger to pursue 101 arguments before the USPTO. This is because patent reexamination is initially limited to patents and printed publications only. As discussed this past May, submitting such challenges in patent reexamination is often litigation inspired, but not without risk of collateral damage to other arguments. …

Continue Reading USPTO Provides Feedback on Prometheus Issues

Reduction in Incoming Requests & Inter Partes Workload to Free Up Resources

Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new patentability trials (Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP) and Inter Partes Review (IPR)) will become available, and must conclude by statute within 12-18 months of initiation. The pendency of the new trial proceedings is a significant improvement relative to existing patent reexamination and is expected to be a significant driver behind filings concurrent with litigation.

As a result of the new options for contested proceedings, the law eliminates inter partes patent reexamination. So, going forward, the Central Reexamination Unit (CRU) will lose a significant, resource intensive stream of work. While it is true that the CRU will remain responsible for legacy inter partes reexamination filings, the 100+ examiners will necessarily have extra time on their hands post-AIA.

Absent a replacement stream of work, the remaining stream, ex parte patent reexamination filings, may benefit from the newly available bandwidth.…
Continue Reading Enhanced Patent Reexamination Speed Coming Soon?

Egregious Misconduct Claim Shot Down by District Court

As most patent reexaminations are conducted in parallel to a related litigation, it is important that the USPTO be informed of the progress of a parallel litigation. For this reason, MPEP 2282; 2686 permit the filing of litigation notices by any party to the proceeding, or even a member of the public. The simple failure to inform the USPTO of a parallel court proceeding had, prior to Therasense, been held to be per se material under the former “reasonable examiner” standard. Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1234 (Fed. Cir. 2007)

But what about an arbitration proceeding, does the same duty apply? …and, does the heightened Therasense standard disturb the earlier Nilssen ruling?…

Continue Reading Arbitration Materials Witheld From USPTO Reexamination

InconsistencyA successful reexamination from a defendant 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 may provide key evidence necessary to prevail during a Markman hearing, or offer new, non-infringement positions to defendants.

Late last month, in Kilopass Technology Inc., v. Sidense Corp (NDCA), the Court cited to seemingly inconsistent statements made by a Patentee during the patent reexamination
Continue Reading Perceived Patent Reexamination Misstep Haunts Plaintiff

Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result

Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation. Instead, as outlined by MPEP 2181–2183, the structure and acts described in the underlying patent specification embody the statutorily mandated scope. That is to say, the structure described in the patent specification as linked to the claimed function is essentially incorporated into the claim. Absent this analysis of the specification for structural support, there can be no structural limits to the claim by which to properly compare the prior art. See MPEP 2183 (C)

Yet, for improperly supported, originally issued means-plus-function claims, a rejection pursuant to 35 U.S.C. § 112 2nd paragraph is not possible in patent reexamination. This is because such a rejection would not be based on “patents and printed publications” as mandated by the patent reexamination statutes. In other words, where a means-plus-function claim examined in patent reexamination lacks any structural support in the patent specification, the USPTO is unable to properly examine the claim. (See my 2010 post on this “Tale of Two Statutes” here)

In a decision last week, the Board of Patent Appeals & Interferences (BPAI) was faced with this statutory conundrum in the inter partes patent reexamination of U.S. Patent 6,446,045. (decision here) The ‘045 Patent is owned by Function Media L.L.C. and is currently asserted against Google Inc. (on appeal to the CAFC).

In the reexamination of the ‘045 Patent all claims were rejected in view of applied art.  However, as the BPAI found the means-plus-function claims unsupported, all of the outstanding rejections were reversed as speculative. Taking the estoppel of inter partes patent reexamination into account (35 U.S.C. § 315), did Google win or lose?…

Continue Reading BPAI Reversal of All Rejections Dooms Patent in Reexamination

Patentable Subject Matter Challenge Advanced in Patent Reexamination

This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus. The decision held that certain patents of Prometheus Laboratories were directed to non-statutory subject matter. Specifically, the Court found the Prometheus patents, claiming methods of administering a blood test to calibrate necessary drug dosages in patients suffering from autoimmune diseases, to be directed to laws of nature.

The decision was an important one for the bio/pharma community, especially as it relates to the 101 analysis currently before the CAFC in the Myriad gene patent dispute.

However, when it comes to such patentable subject matter challenges under 35 U.S.C. § 101, there is currently no vehicle for a patent challenger to pursue such arguments before the USPTO. This is because patent reexamination is limited to patents and printed publications. Yet, challengers will occassionally test the bounds of the USPTO’s patience in this regard by infusing requests with extraneous commentary. …

Continue Reading Prometheus Based Patent Reexamination Requests?

Tax Strategy Patent Reexamination Continues Despite AIA Provision

Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 (here), which claims a method of minimizing transfer tax liability. In 2007, the ‘790 Patent was asserted against a corporate officer of Aetna Inc, the case was settled for…

ITC Mandate Provides Safe Haven for Troll Abuse?

With injunctions harder to come by, and some district courts staying proceedings upon the mere filing of a patent reexamination, it is not surprising that non-practicing entities (NPEs) have been heading to the ITC (and, in the process ding-patent-reexamination”>This is a further benefit for NPEs.

Recently, a motion to stay an ITC proceeding pending patent reexamination was again considered by the agency in Certain Blue Ray Disc Players.…

Continue Reading ITC Action to Continue Despite Advancing USPTO Reexamination

Court Cites Change in Inter Partes Reexamination Standard as Justifying Stay

When faced with the assertion of a patent of questionable validity prospective defendants increasingly resort to patent reexamination. Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement action pending a parallel patent reexamination is a major benefit of the USPTO proceeding.

For this reason, patent reexamination parallel to a district court is often initiated in an attempt to stay the more cost prohibitive court proceeding. In deciding whether or not to stay the court proceeding the courts look to many factors. (See factor based analysis here). When considering whether to stay the proceeding in view of an ongoing inter partes patent reexamination (IPX), courts often identify the estoppel provisions of IPX as supporting an argument that issues will be simplified for trial by awaiting the USPTO decision.

In an interesting twist on the special consideration given to IPX filings, a California district court considered the impact on the recent America Invents Act (AIA) change to the standard for initiating IPX.…

Continue Reading AIA Change to Reexamination Standard Aids Motion to Stay