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Troublesome Oath Requirements Revised

As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities —aggravating an already significant problem.

As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” (here)…
Continue Reading Patent Reissue Oath Practice Revised by USPTO

patent reissue oathMost practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

Continue Reading Defects in Patent Reissue Oaths Inefficiently Cured

In re Staats Argued at CAFC

Last week, an important question relating to broadening patent reissue practice was argued before the CAFC. (In re Staats).

At issue in Staats is a third reissue patent application of Apple Computer Patent 5,940,600. The third reissue patent application was a continuation that claimed priority back to the original reissue application. (the original reissue application being properly filed within two years of issuance of the ‘600 Patent). During prosecution of the third continuation the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the two year window for broadening reissue. The examiner reasoned that the error in the original reissue filing was allegedly unrelated to the error presented for correction in the third filing.

An expanded panel of the BPAI affirmed the rejection (Ex Parte Staats) characterizing the issue in dispute as:

This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?

In last year’s BPAI decision, the Board analyzed the statute based upon their understanding of the equitable principles underlying the two-year limitation provided by the statute. In doing so, the BPAI relied heavily on…
Continue Reading USPTO Patent Reissue Laches Theory Tested at CAFC

USPTO Updates Patent Reissue Practice to be Consistent with In re Tanaka

The USPTO has now issued a Notice entitled “Clarification of Criteria for Reissue Error in View of In re Tanaka.”

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their decision, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. The Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed by the CAFC (In re Tanaka here). In their reversal, the CAFC explained that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.

In order to account for the decision of the CAFC, the USPTO Notice provides:…

Continue Reading USPTO Changes Patent Reissue Practice

Program to Discuss Current & Future Patent Correction Options

In 2010, there were more reissued patents than in any year in history. While patent holders can benefit from using the reissue process to correct patent defects, there are limitations that must be understood and considered.

For those looking for some CLE credit in the month…

Oath Addressing Only New Claims Acceptable

Last week the BPAI considered an application for patent reissue (U.S. Patent 5,819,034) Ex Parte Kuiacose Joseph et al. The appeal considered the propriety of an oath in a patent reissue that did not identify a mistake in the original claims. A similar question was recently explored at the CAFC (In re Tanaka) relative to new, dependent claims.

In the application for patent reissue the original claims were cancelled in favor of new claims directed to a different invention. The cancelled, original claims were presented in a divisional patent application (now suspended pending the reissue). The Examiner found the reissue oath, which was directed to new method claims, defective since it did not identify an error in the original claims. The originally issued claims were directed to a system.

In other words, consistent with the USPTO’s Tanaka argument, the Examiner took the position that the oath was defective as not identifying any defect in the issued patent. The BPAI disagreed with the examiner.…

Continue Reading BPAI Considers Patent Reissue Oath Directed Only to New Claims

USPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule AnalysisBack in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”The CAFC decision (here) explained that the materially narrowing necessary to avoid recapture must relate to the surrendered subject matter, not an “overlooked aspect” of the invention as required by the USPTO, stating:[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured..           .           .           .           .           .           . [T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. (emphasis added)Mostafazadeh did not eliminate the attachment pad limitation, only modified it by removing “circular.” Still, the Board found that the narrowing limitations added in the patent reissue did not relate to the attachment pad limitation, thus step (3) of the Clement test could not save the Patentee. Had the Patentee added narrowing language that related to the circular pads, such as requiring that the attachment pads be formed of a specific alloy, or oriented in a certain way, the removal of “circular” may have been acceptable.This case, much like In re Tanaka, will provide Patentees a greater degree of flexibility, and opportunity to pursue patent reissue going forward.

Back in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”

On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.

In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”

…
Continue Reading CAFC Adjusts the USPTO’s Recapture Rule Analysis

In Re Tanaka Decision on “Bullet Claims” Reversed at CAFCToday, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.In their decision to reverse the Board, the court explained:As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be “wholly or partly inoperative or invalid.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989). Second, “the defective, inoperative, or invalid patent” must have arisen “through error without deceptive intent.” Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent. . . . Judge Giles S. Rich wrote the Handel decision reversing the Board’s rejection of the reissue application. He explained that the reissue claims involved subject matter disclosed in the specification and thus were properly directed to “the invention disclosed in the original patent.” Id. at 944. In a footnote, Judge Rich remarked that “[t]he term ‘inoperative’ has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention.” Id. at 945 n.2 (quoting McGrady, Patent Office Practice 309 (4th ed. 1959)). Judge Rich added that because the original patent claims were all retained in the reissue application the “term ‘less’ [in Handel’s reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims.” Id. at 946 n.2 (emphasis in original). Thus “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” Id. While this court has since characterized that view as dictum, it has not departed from it. . . . Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observa-tion—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.In the dissent, Judge Dyk explains that where all the original claims are still present in the patent reissue proceeding, the addition of narrower dependent claims is a surrender of nothing (i.e., statute requires surrender of original patent). He also notes that the cases relied upon by the majority are distinguishable on their facts.In essence Judge Dyk seems to be saying that where a patent reissue application seeks only new, dependent claims, it is essentially a continuation application by proxy. I think the USPTO would agree. Certainly, the anti-continuation lobby present at the USPTO back in 2008-2009 spawned quite a few initiatives to combat continuation filings. Today’s decision is a very positive development for Patente

Today, the CAFC has held that the addition of narrower, dependent claims in patent reissue is an “error” contemplated by the patent reissue statute. In re Tanaka (CAFC 2011) (here)

As a reminder, Ex parte Tanaka was decided in December of 2009 by the Board of Patent Appeals and Interferences (BPAI). In their holding, the Board explained that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The Board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. In their decision, the Board rejected the reasoning of In re Handel, which indicated that a failure to pursue dependent claims was an appropriate error in patent reissue. The Board characterized this reasoning as “dicta.”

The Board’s decision was reversed today by the CAFC. In their reversal, the court explains that contrary to the Board’s position, the In re Handel dicta is consistent with the patent reissue statute, and the court has not departed from this line of reasoning over the years.…

Continue Reading CAFC Reverses USPTO on Important Question of Patent Reissue

Walker Process Allegation Defeated by Re-issuance of Original Patent ClaimsPost grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that Ecore’s U.S. Patent 6,920,723 was fraudulently procured and wrongfully enforced to monopolize the rubber acoustical underlayment market. The fraud allegations were based on the theory that, during the prosecution of the ‘723 Patent, Ecore intentionally withheld material prior art from the USPTO. (inequitable conduct). U.S. Rubber also alleged that Ecore threatened litigation to competitors, distributors, architects, and end-users, and communicated to them that they may not sell or purchase rubber acoustic underlayment from anyone else due to the ‘723 Patent. U.S Rubber asserted that  these threats were baseless, made in bad faith, and for anti-competitive purposes. (Walker Process Claim); other torts and unfair competition theories were also alleged.Prior to the suit, Ecore sought a broadening reissue of the ‘723 Patent. During the patent reissue proceedings, Ecore provided to the USPTO the allegedly withheld prior art materials. The ‘723 Patent was successfully reissued in November of 2010 with all original claims, and additional, broader claims. Shortly thereafter, Ecore moved for judgement on the pleadings (Rule 12 (c)) with respect to the Walker Process claim.In deciding the issue the court held:The MPEP states that “[a] reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications.” MPEP § 1440 (8th ed. 2010); see also 37 C.F.R. §1.176(a). In other words, the PTO fully examines a re-issuance as if it were presented for the first time. See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191 (Fed. Cir. 1997); see also (Pl.’s Resp. 2:14-16 (stating that “the reissue process is an entirely new application process based on the scope of claims, which was the basis of Defendant’s reissue application”).) Here, Defendant submitted its reissuance application with the allegedly invalidating prior art. (See RJN Exs. 2-8.) Even with the contentious prior art, the PTO issued RE41945 to Defendant, and did so after reviewing the patent as if for the first time. (RJN Ex. 1.) The re-issuance does not cure the alleged fraud, but it is dispositive of whether the PTO would have issued the original ‘723 Patent.Because the PTO reexamines re-issuance applications as if being presented for the first time, the fact that the PTO did re-issue Defendant’s patent even with the prior art precludes Plaintiff from plausibly pleading Claim One.Interestingly, the “but for” test has been proposed as a standard for inequitable conduct pleadings. Therasense, Inc. v. Becton Dickinson and Co. (CAFC 2011). (Note: Ecore is represented by Oblon Spivak)

Post grant proceedings before the USPTO cannot cure inequitable conduct. This is because the inequitable conduct inquiry centers on the patentee’s intent during the prosecution of the original application. Still, a finding that a reference lacks materiality by the USPTO in a post grant proceeding can be quite useful to a patentee for rebutting a charge of inequitable conduct. Likewise, a finding of materiality by the USPTO in a post grant proceeding can be quite useful to defendants for bolstering a charge of inequitable conduct. In this same vein, a recent case has demonstrated that a favorable post grant result at the USPTO may be used to completely preclude allegations of fraud that rely upon the “but for” test, such as a Walker Process claim.

A Walker Processclaim seeks to strip a patentee of its exemption from the antitrust laws. Several factors must be present to prove such a claim, one of which is “a clear showing of reliance, i.e., that the patent would not have issued but for the misrepresentation or omission.”

In U.S. Rubber Recycling, Inc. v. ECORE International Inc., et al.(CDCA), plaintiff, U.S. Rubber, alleged that…
Continue Reading Patent Reissue Disproves Fraud Allegation