Public Meeting to be Held at USPTO June 1st

As discussed back in April, the USPTO has proposed a collection of working concepts and initiatives in the Federal Register for the purpose of stramlining patent reexaminaton. Based upon public commentary, the USPTO will consider implementing/modifying the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

The proposals are directed to both ex parte and inter partes patent reexamination (see above link for more detail). Written comments are due to be submitted June 29, 2011, however, the public meeting to discuss these proposals is scheduled for next week. In order to attend the meeting, the USPTO is requiring registration by May 25, 2011.

I will be delivering comments on the proposals along with other scheduled speakers. For those  unable to attend, I will publish my slides and any other available materials here, next week.

BPAI Considers Whether a Purchased Publication is Publicly Available

In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March,the degree of public accessibility of such references is key to determining whether or not a given reference qualifies as prior art. In the March decision, public accessibility was not found for a reference limited to confidential distribution among members of a technical group.

Yesterday in Ex ParteePlus Inc, the BPAI considered an appellant’s theory that a proprietary user manual was not publicly accessible since it required a purchase, and included boiler plate language identifying its proprietary nature.

In considering the public accessibility of user manuals sold together with a product, the Board explained:

Appellant argues that the manuals were designed for use by those who licensed the associated computer software and all were indicated to be kept confidential, such that the authors of those manuals did not act to disseminate or otherwise make the manuals available (App. Br. 24-26). The Examiner finds that none of the operating manuals were confidential documents disseminated to a closed group, as any member of the public was able to purchase the software, and obtain access to the publications (Ans. 8). We agree with the Examiner.

We find much of Appellant’s arguments address the nature of the three applied manuals, and how those manuals were to be maintained in confidence (App. Br. 24-27). Appellant asserts that the manuals “were only accessible to a closed group of licensees of the respective software associated with the manuals” (App. Br. 25). While we agree with Appellant that the documents bear legends restricting reproduction and copying (Reply Br. 9), that does not rise to the level of confidentiality at issue here. Rather, we find that this speaks to the software and the manuals being proprietary. We find that most software and the manuals that come with such software would contain restrictions on copying and further distribution, but that would not rise to the level of those items being considered confidential disclosures. Considerations of such confidentiality would require restrictions on who could purchase or otherwise obtain the specific documentation, which has not been shown with respect to the cited manuals.. . . . . .

The requirement of purchasing software to obtain a manual goes to its cost and not its accessibility.

(emphasis added)

The rejection of the reexamined ePlus claims (24-45), of U.S. Patent 6,023,683 were affirmed. The patent was previously litigated in the EDVA against defendants SAP and Ariba Inc., both of which settled with ePlus. For more recent background on the ongoing ePlus campaign see the 2010 post (here)

How do Appellants Fare on Appeal in Patent Reexamination?Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. (click to enlarge)  The category “other” refers to administrative remands, substantive remands and dismissals.Over the past three years, examiners have been affirmed, at least in some fashion, close to 70% of the time. Unfortunately, this appeal data does not distinguish between ex parte and inter partes results. One would expect the inter partes appeal results to be more favorable to third party requesters based upon USPTO statistics on the ultimate outcome of these proceedings. Still, an affirmance in inter partes patent reexamination could also indicate a favorable outcome for a patentee if the affirmance relates to an examiner decision to allow claims. Hopefully the PTO will begin to distinguish between the type of reexamination proceedings in future appeal statistics. In the meantime, I will present a more detailed analysis of the general results above in the near futu

Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).

An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. (click to enlarge)  The category “other” refers to administrative remands, substantive remands and dismissals.

appeals

Over the past three years, examiners have been affirmed, at least in some fashion, close to 70% of the time. Unfortunately, this appeal data does not distinguish between ex parte and inter partes results. One would expect the inter partes appeal results to be more favorable to third party requesters based upon USPTO statistics on the ultimate outcome of these proceedings. Still, an affirmance in inter partes patent reexamination could also indicate a favorable outcome for a patentee if the affirmance relates to an examiner decision to allow claims. Hopefully the PTO will begin to distinguish between the type of reexamination proceedings in future appeal statistics. In the meantime, I will present a more detailed analysis of the general results above in the near future.

Inter Partes Patent Reexamination Petition Practice May Back Fire on Unwary PatenteesIn inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis. One of the more common petitions in inter partes patent reexamination is a petition for waiver of the page limit requirement. That is to say, submissions in inter partes patent reexamination are limited to 50 pages of substantive comment. (37 C.F.R. § 1.943). As it is not uncommon for initial requests for inter partes patent reexamination to total hundreds of pages, Patentees will often seek waiver of the page limit in order to respond to all issues. The waiver of Rule 943 is sought via petition (37 C.F.R. § 1.183).Of course, at the time of petitioning, the patentee is by definition submitting a response that exceeds the 50 page limit. In other words, the “response” as submitted does not comport with the statutory definition unless, and until, the petition is granted. As recently demonstrated in 95/001,206 (decision here) such a filing will effectively delay the time for a third party response by several months.In the ‘206 case, a patentee response was filed on June 7, 2010 along with a petition to waive the page limit requirement. The third party did not file a response by July 7, 2010. The patentee petition was granted on August 11, 2010. In the petition, the USPTO noted that a third party response was due 30 days from the date of the petition decision; thereafter the third party filed their response (some 2 months after July 7, 2010). Subsequently, the patentee filed a further petition seeking to strike the third party response as untimely, in the decision linked above, the USPTO explained:Certainly, it is not possible to adhere to the page limit requirement in all cases. However, patentees should consider the impact of filing a response that exceeds the page limit together with an appropriate petition. That is to say, the cost of additional pages is effectively an extension of time that would be otherwise unattainable to the third par

In inter partes patent reexamination, a participating third party must submit their written comment to a patentee response within 30 days. Since the 30 day deadline is provided by statute, the USPTO has no discretion to extend this period. (35 U.S.C. § 314). This statutory deadline can be especially onerous in those reexaminations that are subject to concurrent litigation as the issues tend to be significantly complex, time intensive and numerous.

On the other side of the fence, a patentee is typically given a two month deadline to comment on an action of the USPTO, extendible upon petition (showing of reasonable diligence toward meeting the current due date). As can be appreciated, third parties must respond to the same issues in, at best, half the time provided to the patentee. Indeed, where a healthy number of new claims are added in a response by the patentee, the third party would need to develop additional rejections/art for the new claims. Due to the relative inequities in response periods for opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.

As noted above, a third party cannot extend the statutory response time. Yet, surprisingly, unwary patentees indirectly provide this very relief to third parties on a regular basis.

One of the more common petitions in inter partes patent reexamination is a petition for waiver of the page limit requirement. That is to say, submissions in inter partes patent reexamination are limited to 50 pages of substantive comment. (37 C.F.R. § 1.943). As it is not uncommon for initial requests for inter partes patent reexamination to total hundreds of pages, Patentees will often seek waiver of the page limit in order to respond to all issues. The waiver of Rule 943 is sought via petition (37 C.F.R. § 1.183).

Of course, at the time of petitioning, the patentee is by definition submitting a response that exceeds the 50 page limit. In other words, the “response” as submitted does not comport with the statutory definition unless, and until, the petition is granted. As recently demonstrated in 95/001,206 (decision here) such a filing will effectively delay the time for a third party response by several months.

In the ‘206 case, a patentee response was filed on June 7, 2010 along with a petition to waive the page limit requirement. The third party did not file a response by July 7, 2010. The patentee petition was granted on August 11, 2010. In the petition, the USPTO noted that a third party response was due 30 days from the date of the petition decision; thereafter the third party filed their response (some 2 months after July 7, 2010). Subsequently, the patentee filed a further petition seeking to strike the third party response as untimely, in the decision linked above, the USPTO explained:

insert

Certainly, it is not possible to adhere to the page limit requirement in all cases. However, patentees should consider the impact of filing a response that exceeds the page limit together with an appropriate petition. That is to say, the cost of additional pages is effectively an extension of time that would be otherwise unattainable to the third party.

Early Stage Reexamination Result Lacks Probative Value for Summary Judgment PurposesAs discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.As explained last week in Volterra Semiconductor Corporation v. Primarion, Inc., et. al. (NDCA):With respect to the PTO Initial Office Actions and reexamination orders, it is well established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1998), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. . . . Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question . . . Therefore, Plaintiff’s objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity.For the above reasons, parallel patent reexamination filings are almost never concurrently filed for the purpose of convincing a fact finder that a patent should be found invalid. Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, the benefits of parallel patent reexamination evidence are explained as: aiding an inequitable conduct defense, impacting claim construction,  rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive relief.In the above case, although inequitable conduct was denied on summary judgement for intent reasons, the materiality determination of the reexamination with respect to common references was considered by the court.This case was brought to my attention by the great Docket Navigator.

As discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.

As explained last week in Volterra Semiconductor Corporation v. Primarion, Inc., et. al. (NDCA):

With respect to the PTO Initial Office Actions and reexamination orders, it is well established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1998), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. . . . Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question . . . Therefore, Plaintiff’s objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity.

For the above reasons, parallel patent reexamination filings are almost never concurrently filed for the purpose of convincing a fact finder that a patent should be found invalid. Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, the benefits of parallel patent reexamination evidence are explained as: aiding an inequitable conduct defense, impacting claim construction,  rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive relief.

In the above case, although inequitable conduct was denied on summary judgement for intent reasons, the materiality determination of the reexamination with respect to common references was considered by the court.

This case was brought to my attention by the great Docket Navigator.

Flawed Patent Reexamination Request A Matter of National Importance?The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California court determined that the state law cause of action was preempted by federal law (i.e., the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted seem slim to say the least. The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.As I have commented in previous posts, in addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. Further, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood added 22 new claims, this certainly was not harmful.Strange that this dispute has been pursued this f

The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. 

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California court determined that the state law cause of action was preempted by federal law (i.e., the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)

Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:

Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.

Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted  seem slim to say the least. 

The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.

As I have commented in previous posts, in addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. 

Further, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood added 22 new claims, this certainly was not harmful.

Strange that this dispute has been pursued this far.

Recently Filed Reexaminations Sway California Court to Halt ProceedingTiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  The Washington case is now stayed pending the ITC action, which is set for trial this November.Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.Typically, staying a district court action pending patent reexamination is disfavored when direct competitiors are involved. Rather than considering  the potential loss of market share, customers, and the like, the court emphasized the aggressive, and concurrent actions taken by Microsoft in other fora. The court explained: (full decision here). . .Microsoft claims that it will suffer undue prejudice as a result of a stay because staying this case alone will not increase the likelihood of settlement. Opp‟n 11-12. According to Microsoft, because the ITC Investigation and TiVo‟s suit against AT&T will still continue, Microsoft will have no reason to resolve this case. Id. at 11-12. The Court is not persuaded. If the Court were to stay this case, Microsoft is still asserting against TiVo, in the ITC and in the Western District of Washington, patents related to those at issue here. Those actions also involve the same accused TiVo products as those accused in this case. Moreover, the ITC Investigation is set for trial in November 2011, much sooner than trial in this matter would be possible. Therefore, even if this case is stayed, the parties will go to trial against each other twice within the next seven months, as the Eastern District of Texas case is set for trial in October of 2011, and each trial carries with it the potential for injunctive relief. Thus, it is still possible that Microsoft and TiVo will resolve their broader dispute without this litigation. This, in turn, could lead to settlement here.Prejudice is a hard sell when you have the legal resources and market power of Microsoft.This case was brought to my attention by the great Docket Navigator.

TiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.

TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. 

Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  

The Washington case is now stayed pending the ITC action, which is set for trial this November.

Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft.

Typically, staying a district court action pending patent reexamination is disfavored when direct competitiors are involved. Rather than considering  the potential loss of market share, customers, and the like, the court emphasized the aggressive, and concurrent actions taken by Microsoft in other fora. The court explained: (full decision here)

. . .Microsoft claims that it will suffer undue prejudice as a result of a stay because staying this case alone will not increase the likelihood of settlement. Opp‟n 11-12. According to Microsoft, because the ITC Investigation and TiVo‟s suit against AT&T will still continue, Microsoft will have no reason to resolve this case. Id. at 11-12. The Court is not persuaded. If the Court were to stay this case, Microsoft is still asserting against TiVo, in the ITC and in the Western District of Washington, patents related to those at issue here. Those actions also involve the same accused TiVo products as those accused in this case. Moreover, the ITC Investigation is set for trial in November 2011, much sooner than trial in this matter would be possible. Therefore, even if this case is stayed, the parties will go to trial against each other twice within the next seven months, as the Eastern District of Texas case is set for trial in October of 2011, and each trial carries with it the potential for injunctive relief. Thus, it is still possible that Microsoft and TiVo will resolve their broader dispute without this litigation. This, in turn, could lead to settlement here.

Prejudice is a hard sell when you have the legal resources and market power of Microsoft.

This case was brought to my attention by the great Docket Navigator.

Overhaul to U.S Patent System Awaits Further DebateThere has been true progress toward enacting patent reform in 2011. First, in March, S.23 was shepherded through the Senate in a matter of weeks by Senator Leahy. Next the House took up H.R. 1249. The House companion bill includes much of the same, if not identical provisions to S.23. A few weeks back H.R. 1249 was refined by Manager Amendment and voted out of committee for floor debate.With the House now back in session, H.R. 1249 will now await its turn in the legislative queue. An early summer debate (mid-late June) seems likely based upon the current House calendar. During this debate, key provisions of the bill will likely be attacked anew, further amendments have been promised.Prospects for bill passage, at least in some form, still seem very high. With the current PTO budget crunch, fee diversion will likely be a significant rallying cry for suporters.Stay Tuned. 

There has been true progress toward enacting patent reform in 2011. First, in March, S.23 was shepherded through the Senate in a matter of weeks by Senator Leahy. Next the House took up H.R. 1249. The House companion bill includes much of the same, if not identical provisions to S.23. A few weeks back H.R. 1249 was refined by Manager Amendment and voted out of committee for floor debate.

With the House now back in session, H.R. 1249 will now await its turn in the legislative queue. An early summer debate (mid-late June) seems likely based upon the current House calendar. During this debate, key provisions of the bill will likely be attacked anew, further amendments have been promised.

Prospects for bill passage, at least in some form, still seem very high. With the current PTO budget crunch, fee diversion will likely be a significant rallying cry for suporters.

Stay Tuned.

 

SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent ReexaminationAs discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.   

As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order) 

In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.

Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference.

 

xp

 snq1

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.”

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.