Relation Between PTO Reexamination and Court Validity Judgment

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Federal Circuit Reinforces Patent Rights as a Public Concern of a Regulatory Framework
The constitutionality of USPTO’s Inter Partes Review (IPR) mechanism has been challenged in a few district court cases over the past year. The challenge typically argues that the Patent Trial & Appeal Board (PTAB) cannot abrogate the jurisdiction of an Article III court in assessing patent validity, and/or that the PTAB prevents the 7th amendment right to a jury trial. I have largely refrained from discussing these recent cases as I found the arguments to be a bit too “creative.”  This is because the very same arguments failed decades ago when patent reexamination was first introduced in the 1980s.  Patlex Corp v. Mossinghoff (CAFC 1985)

The recent constitutionality arguments hoped to distinguish the earlier precedent on the basis that, unlike patent reexamination, which is examination based,  IPR is adjudicative.  I always found this position odd given that an unfavorable reexamination may be appealed to several adjudicative bodies, and IPR was a replacement for inter partes patent reexamination (which was also adversarial).

Today, in MCM Portfolio LLC v. Hewlett-Packard Company, the CAFC agreed, reinforcing the Patlex precedent of the 1980s.
Continue Reading CAFC Denies Strained Constitutionality Challenge to IPR Process

Court Denies Second Request to Revisit Controversial Case

The CAFC first considered the validity of Baxter International’s U.S. Patent 5,247,434 (the ‘434 patent) on appeal from a patent infringement litigation with Fresenius. In that first appeal (now commonly referred to as Fresenius I), the Court found the patent not invalid over certain prior art in 2009. After Fresenius I, the litigation dispute went back to the district court on a damages related remand.

Meanwhile, in May 2012 a patent reexamination that was filed by Fresenius USA Inc. in 2007 made its way to the CAFC. The reexamination was based on much the same prior art as previously considered in Fresenius I. This time, the CAFC affirmed the determination of the BPAI that the claims were obvious over the applied prior art applying the more liberal standards for USPTO challenges. En banc review was then sought, but declined in the Baxter reexamination appeal.

Thereafter, Fresenius II made it’s way to the CAFC to determine whether the outstanding damage award was enforceable in light of the CAFC’s decision in In re Baxter. The CAFC held that as the damage award was not yet final, it was essentially erased by the cancellation of the patent in reexamination, and once again, en banc review was sought last summer.
Continue Reading CAFC Denies En Banc Review in Fresenius II

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

injunction-reexaminationFinal Patent Reexamination Result to Dissolve Injunction 

A defendant’s request to delay entry of a permanent injunction until reexamination concludes is more likely to be well-taken by a district court when the reexamination is near conclusion and rejecting the patent owner’s claims.  Depending on the length of time that passes before a litigant requests reexamination of a patent, either party could argue that the timing of the request supports its own interests under the four factor P.I. test and the balancing of the equities.

This tension played out recently in Inventio AG v. Otis Elevator Co. (SDNY)

In Otis, the Court found that entry of a permanent injunction was against public interest (i.e., P.I .fourth factor) where a patent reexamination existed
Continue Reading Permanent Injunction Status Linked to Patent Reexamination

starStar Scientific’s Belated Victory in Patent Reexamination, Missed Opportunity?

Last week, Star Scientific’s ex parte patent reexaminations (90/009,372 & 90/009,375) were favorably terminated based upon responses filed in November of 2009.  The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.

The 16 month delay between the November 2009 filing and March 2011 termination was the result of a procedural dispute. I discussed this development last Spring for the purposes of illustrating the importance of filing a proper interview summary in ex parte patent reexamination. As I pointed out at that time, misguided petition practice can turn a relatively minor miscue into a much larger problem.

In June of of 2009, a Maryland jury determined that Star’s patents were invalid. The jury also found that RJR did not infringe either patent. Star appealed to the Court of Appeals for the Federal Circuit (CAFC), oral arguments were heard on January 11, 2011. In their appeal, Star is seeking a new trial, alleging that RJR tainted the jury by referencing improper evidence.

On Friday, Star issued a press release touting their patent reexamination results. But, with the CAFC appeal briefed and argued, does the reexamination have any relevance at all?
Continue Reading Patent Reexamination Success as Court Room Evidence

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

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.)

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–A Glitch in the Matrix?–

As noted in Part I of our series on intervening rights, claim amendments in reexamination and/or reissue at the USPTO may create absolute and/or equitable intervening rights. Although the doctrine of intervening rights is codified as a component of reissue statute 35 U.S.C. § 252, reexamination statutes 35 U.S.C. § 307 (ex parte) and 35 U.S.C. § 316 (inter partes) incorporate the reissue statute in this regard.

35 U.S.C. § 252 Effect of Reissue.

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent. (emphasis added)

As can be appreciated, 35 U.S.C. § 252 states that substantially identical claims are treated no differently with respect to liability (damages) than original claims.[1]

Of course, this provision begs the question:

What types of claim changes can be made
Continue Reading Intervening Rights & The Substantially Identical Standard

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…

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