Extraordinary Development Prompts USPTO Relief for Applicants and PatenteesIn view of the terrible tragedy currently challenging Japanese citizens, the USPTO has announced today that patentees in patent reexamination may opt to reset their present due dates. (full notice here). The option is available to those inventors, assignees, and associated individuals in the area affected by the unprecedented devastation.Unfortunately, third party requesters in inter partes patent reexamination will still need to submit comments subject to the 30 day response period. Likewise, a requester responding to a patent owner statement in ex parte reexamination must respond on time.  As these response periods are statutory, the USPTO cannot reset this timing. (see last paragraph of the notice).The portion of the notice  relevant to patent reexamination is noted below:

In view of the terrible tragedy currently challenging Japanese citizens, the USPTO has announced today that patentees in patent reexamination may opt to reset their present due dates. (full notice here). The option is available to those inventors, assignees, and associated individuals in the area affected by the unprecedented devastation.

Unfortunately, third party requesters in inter partes patent reexamination will still need to submit comments subject to the 30 day response period. Likewise, a requester responding to a patent owner statement in ex parte reexamination must respond on time.  As these response periods are statutory, the USPTO cannot reset this timing. (see last paragraph of the notice).

The portion of the notice  relevant to patent reexamination is noted below:

Japan notice

Shotgun Approach to Patent Reexamination Request Haunts DefendantWithin a few days of filing, requests for patent reexamination are reviewed by the USPTO for basic compliance as to matters of form. Currently, upward of 30% of filings are returned as non-compliant. While practitioners may find this perceived nit picking an annoyance, as a recent case demonstrates, the USPTO may be doing you a huge favor.Yesterday, in Old Reliable Wholesale, Inc. v. Cornell Corp., (Fed. Cir. 2011), the CAFC reversed an award of attorney fees and costs (roughly $200k) to defendant Cornell. The fee award stemmed from an earlier infringement suit of U.S. Patent 5,069,950 directed to insulated roof board. The reversal as to fees was based, in part, on the fact that the USPTO favorably concluded an ex parte patent reexamination (90/009,258) of the ‘950 patent.While the CAFC reversed the fee award based upon the favorable consideration of certain prior art in the reexamination, it appears as though this art was largely overlooked, perhaps, due to the format of the defendant’s request.The fees were awarded based upon the trial court’s decision that pursuit of the litigation beyond a certain deposition date was baseless. During a deposition, the plaintiff’s founder seemingly acknowledged the “sameness” of certain prior art relative to the patented claims. As a result, summary judgment of invalidity was entered in favor of defendant Cornell (later affirmed by the CAFC). Shortly thereafter, the defendant sought, and was awarded the $200k costs in the district court for all litigation expenses occurring after the deposition. The prior art that formed the basis of the summary judgment, related to certain products of Cornell and that of another company, Branch River.  These references (in the form of product brochures) were submitted to the USPTO in a request for ex parte patent reexamination on August 20, 2008. After a first action was issued in October of 2009, the proceeding was favorably concluded in a Notice of Intent to Issue a Reexamination Certificate (NIRC) to on June 15, 2010. (As the CAFC invalidated the patent 6 months prior, the PTO corrected the NIRC to cancel all claims two weeks later)In appealling the fee award to the CAFC, the plaintiff pointed out the USPTO’s favorable reexamination conclusion as evidence that the pursuit of the litigation was not unreasonable as to invalidity. (The CAFC took official notice of this patent reexamination evidence since it was not part of the district court record). The CAFC explained:The fact that the PTO, after assessing the relevant prior art, confirmed the patentability of all claims of the ’950 patent undercuts Cornell’s contention that Old Reliable had no reasonable basis for its assertion that its patent was not anticipated. . . .Moreover, although the PTO may not have considered all the deposition testimony relied upon by the district court in making its invalidity determination, the fact remains that the PTO assessed the VT-2 [Cornell] and the Air-Flo [Branch River], as well as many other prior art references, and yet confirmed the validity of all claims of the ’950 patent over the prior art. (emphasis added)However, it is unclear whether or not the USPTO really assessed these references.In their request for reexamination, the defendant presented 14 prior art references, including the Cornell and Branch River art noted by the CAFC. Unfortunately, in presenting the 14 references for consideration, the art was lumped together and argued in the alternative as to anticipation and obviousness. It is unlikely that such a request would be deemed compliant by the USPTO today. (See USPTO FAQ # 4) Still, the request was granted in 2008.In the grant of the patent reexamination, the examiner found that the Cornell and Branch River art constituted SNQs relative to the patent. Yet, the Cornell and Branch River references were not applied in the later rejections. Presumably, the examiner deemed this art, as well as the vast majority of other references, cumulative (although the action is silent as to this issue). Thereafter, the patentee was able to convince the examiner of the patentability of the issued claims in view of the limited art applied. In the NIRC, the examiner simply stated that the “other art did not disclose or suggest” the claims.By arguing in the alternative and lumping together the rejections of the request, the defendant left it to the examiner to pick and choose among the seemingly interchangeable art. Looking back, a notice of non-compliance may have saved Cornell $20

Within a few days of filing, requests for patent reexamination are reviewed by the USPTO for basic compliance as to matters of form. Currently, upward of 30% of filings are returned as non-compliant. While practitioners may find this perceived nit picking an annoyance, as a recent case demonstrates, the USPTO may be doing you a huge favor.

Yesterday, in Old Reliable Wholesale, Inc. v. Cornell Corp., (Fed. Cir. 2011), the CAFC reversed an award of attorney fees and costs (roughly $200k) to defendant Cornell. The fee award stemmed from an earlier infringement suit of U.S. Patent 5,069,950 directed to insulated roof board. The reversal as to fees was based, in part, on the fact that the USPTO favorably concluded an ex parte patent reexamination (90/009,258) of the ‘950 patent.

While the CAFC reversed the fee award based upon the favorable consideration of certain prior art in the reexamination, it appears as though this art was largely overlooked, perhaps, due to the format of the defendant’s request.

The fees were awarded based upon the trial court’s decision that pursuit of the litigation beyond a certain deposition date was baseless. 

During a deposition, the plaintiff’s founder seemingly acknowledged the “sameness” of certain prior art relative to the patented claims. As a result, summary judgment of invalidity was entered in favor of defendant Cornell (later affirmed by the CAFC). Shortly thereafter, the defendant sought, and was awarded the $200k costs in the district court for all litigation expenses occurring after the deposition. 

The prior art that formed the basis of the summary judgment, related to certain products of Cornell and that of another company, Branch River.  These references (in the form of product brochures) were submitted to the USPTO in a request for ex parte patent reexamination on August 20, 2008. After a first action was issued in October of 2009, the proceeding was favorably concluded in a Notice of Intent to Issue a Reexamination Certificate (NIRC) to on June 15, 2010. (As the CAFC invalidated the patent 6 months prior, the PTO corrected the NIRC to cancel all claims two weeks later)

In appealling the fee award to the CAFC, the plaintiff pointed out the USPTO’s favorable reexamination conclusion as evidence that the pursuit of the litigation was not unreasonable as to invalidity. (The CAFC took official notice of this patent reexamination evidence since it was not part of the district court record). The CAFC explained:

The fact that the PTO, after assessing the relevant prior art, confirmed the patentability of all claims of the ’950 patent undercuts Cornell’s contention that Old Reliable had no reasonable basis for its assertion that its patent was not anticipated. . . .

Moreover, although the PTO may not have considered all the deposition testimony relied upon by the district court in making its invalidity determination, the fact remains that the PTO assessed the VT-2 [Cornell] and the Air-Flo [Branch River], as well as many other prior art references, and yet confirmed the validity of all claims of the ’950 patent over the prior art. (emphasis added)

However, it is unclear whether or not the USPTO really assessed these references.

In their request for reexamination, the defendant presented 14 prior art references, including the Cornell and Branch River art noted by the CAFC. Unfortunately, in presenting the 14 references for consideration, the art was lumped together and argued in the alternative as to anticipation and obviousness. It is unlikely that such a request would be deemed compliant by the USPTO today. (See USPTO FAQ # 4) Still, the request was granted in 2008.

In the grant of the patent reexamination, the examiner found that the Cornell and Branch River art constituted SNQs relative to the patent. Yet, the Cornell and Branch River references were not applied in the later rejections. Presumably, the examiner deemed this art, as well as the vast majority of other references, cumulative (although the action is silent as to this issue). Thereafter, the patentee was able to convince the examiner of the patentability of the issued claims in view of the limited art applied. In the NIRC, the examiner simply stated that the “other art did not disclose or suggest” the claims.

By arguing in the alternative and lumping together the rejections of the request, the defendant left it to the examiner to pick and choose among the seemingly interchangeable art. Looking back, a notice of non-compliance may have saved Cornell $200k.

Lack of Patent Reexamination Discussion in Microsoft Brief EmphasizedAs I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue. In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. The i4i brief (here) summarizes the patent reexamination arguments noting,A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing   standard by leaving the standard alone and instead making other changes, principally authorizing reexamination.  (emphasis added)Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next we

As I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.  

In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue.

 In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. 

The i4i brief (here) summarizes the patent reexamination arguments noting,

A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .

For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing   standard by leaving the standard alone and instead making other changes, principally authorizing reexamination.  (emphasis added)

Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next week.

Board of Patent Appeals & Interferences Explains Accessibility ConsiderationsIn the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained thatthe relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the ‘432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the ‘432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the inventi

In the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.

In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained that

the relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.

The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the ‘432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the ‘432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.

As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.

For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the invention.

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

Patent Enforceability Key Factor In Patent Reexamination Eligibility, Not ExpirationIn patent reexamination strategy, especially concurrent to litigation, timing is everything.1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.But what about expired patents? Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, thus the litigation would continue at some point no matter what happened at the USPTO.The decision, found here, also noted some other factors tending to favor continuation of the litigation independent of the patent expiration issue. Unfortunately for Ameridose, typically, seeking a stay where some patents are not subject to patent reexamination is a non-starter; as it was here.The record does not specifically reflect the reason why the defendant did not pursue patent reexamination of the expired patent. However, it seems that Ameridose viewed the expired patent as less likely to weigh in favor of plaintiff prejudice (should a stay be entered) since there are no damages going forward.But, let’s take a look at the patent expiration issue.Of course, it is perfectly appropriate for a patent to be reexamined after expiration. In fact, the USPTO provides a separate claim interpretation standard for such cases. Unlike reissue applications, which cannot be pursued after expiration, patent reexamination is based upon the enforceability of the patent. The period of enforceability is determined by adding 6 years to the date of patent expiration. 37 C.F.R. § 1.510(a)Looking only at the filing date, the ‘086 patent would seemed to have expired on November 24, 2006. However, this patent’s term was extended, due to the regulatory review delay of the Food & Drug Administration. The extended expiration date of the ‘086 patent is September 24, 2010. Thus, the ‘086 patent remains enforceable (for past damage purposes) until September 24, 2016.Surely, had patent reexamination been pursued, relief would not have been possible by operation of intervening rights. This is because an expired patent may not be amended. Still, the patent could have been invalidated by patent reexamination, and the odds of staying the case would have been greatly improved.This case was brought to my attention by the great Docket Navigator.

In patent reexamination strategy, especially concurrent to litigation, timing is everything.

1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)

2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)

3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.

But what about expired patents? 

Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, thus the litigation would continue at some point no matter what happened at the USPTO.

The decision, found here, also noted some other factors tending to favor continuation of the litigation independent of the patent expiration issue. Unfortunately for Ameridose, typically, seeking a stay where some patents are not subject to patent reexamination is a non-starter; as it was here.

The record does not specifically reflect the reason why the defendant did not pursue patent reexamination of the expired patent. However, it seems that Ameridose viewed the expired patent as less likely to weigh in favor of plaintiff prejudice (should a stay be entered) since there are no damages going forward.

But, let’s take a look at the patent expiration issue.

Of course, it is perfectly appropriate for a patent to be reexamined after expiration. In fact, the USPTO provides a separate claim interpretation standard for such cases. Unlike reissue applications, which cannot be pursued after expiration, patent reexamination is based upon the enforceability of the patent. The period of enforceability is determined by adding 6 years to the date of patent expiration. 37 C.F.R. § 1.510(a)

Looking only at the filing date, the ‘086 patent would seemed to have expired on November 24, 2006. However, this patent’s term was extended, due to the regulatory review delay of the Food & Drug Administration. The extended expiration date of the ‘086 patent is September 24, 2010. Thus, the ‘086 patent remains enforceable (for past damage purposes) until September 24, 2016.

Surely, had patent reexamination been pursued, relief would not have been possible by operation of intervening rights. This is because an expired patent may not be amended. Still, the patent could have been invalidated by patent reexamination, and the odds of staying the case would have been greatly improved.

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

BPAI Sides with AccushnetAs reported here last January, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims.Not surprisingly, today the BPAI affirmed all rejections made by the examiner (decisions here here and here)Next up is the inevitable request for rehearing at the BPAI, then appeal to CAFC. In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Seems this war is all but ov

As reported here last January, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)

The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims.

Not surprisingly, today the BPAI affirmed all rejections made by the examiner (decisions here here and here)

Next up is the inevitable request for rehearing at the BPAI, then appeal to CAFC. In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Seems this war is all but over.

S.23 Exits Senate with Major Provisions IntactAs expected, S.23, now known as the America Invents Act breezed through a Senate vote today. (95-5) Touted as a jobs bill, most major provisions remain intact. Perhaps the most significant change proposed in the reform bill is the end of the  first to invent system in favor of a first inventor to file system. Additionally, a post grant review process is provided. (full text of bill here)Added in the Senate Manager’s Amendment was a long over due provision ending USPTO fee diversion.  Removed were draft damage and venue provisions deemed to be superseded by recent CAFC decisions.Another notable addition to the Manager’s Amendment is a transitional program for the post grant review of “business method patents.”  The definition offered in the bill is limited to methods or corresponding apparatus that relate to the practice, administration or management of a financial product or service, however, inventions relating to “technological inventions” are excluded. It is up to the USPTO to define “technological invention”…..where have I heard that before?Senator Leahy had this to say about the Senate bill passage:The America Invents Act will promote American innovation, create American jobs and grow America’s economy, all without adding to the deficit.  It is a jobs bill that won’t spend a penny of taxpayer dollars.  It is common sense legislation that will help preserve America’s position as the global leader in invention and innovation.  I hope that the House will look favorably on our work and adopt this measure so that it can be sent it to the President without delay and its improvements can take effect in order to encourage American innovation and promote American invention.It is expected Congress will keep the momentum going until the bill gets signed into l

As expected, S.23, now known as the America Invents Act breezed through a Senate vote today. (95-5) Touted as a jobs bill, most major provisions remain intact. Perhaps the most significant change proposed in the reform bill is the end of the  first to invent system in favor of a first inventor to file system. Additionally, a post grant review process is provided. (full text of bill here)

Added in the Senate Manager’s Amendment was a long over due provision ending USPTO fee diversion.  Removed were draft damage and venue provisions deemed to be superseded by recent CAFC decisions.

Another notable addition to the Manager’s Amendment is a transitional program for the post grant review of “business method patents.”  The definition offered in the bill is limited to methods or corresponding apparatus that relate to the practice, administration or management of a financial product or service, however, inventions relating to “technological inventions” are excluded. It is up to the USPTO to define “technological invention”…..where have I heard that before?

Senator Leahy had this to say about the Senate bill passage:

The America Invents Act will promote American innovation, create American jobs and grow America’s economy, all without adding to the deficit.  It is a jobs bill that won’t spend a penny of taxpayer dollars.  It is common sense legislation that will help preserve America’s position as the global leader in invention and innovation.  I hope that the House will look favorably on our work and adopt this measure so that it can be sent it to the President without delay and its improvements can take effect in order to encourage American innovation and promote American invention.

It is expected Congress will keep the momentum going until the bill gets signed into law.

Undoing a Stay Pending Patent Reexamination?…UnlikelyWhere an order has been granted to stay a patent litigation pending the outcome of a reexamination of the patent-in-suit, there is little likelihood that patent owner will be able to successfully appeal the decision ordering the stay of litigation. Such orders are generally not appealable, because they are not considered final decisions.  See Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983). There is an exception where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See Slip Track Sys., Inc. v. Metal-Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).Federal courts have often found jurisdiction to review stays in favor of state court suits when the state court judgment would have a fully preclusive effect on the federal action or moot the federal action entirely.  See , e.g. , Cone , 460 U.S. at 10; Terra Nova Ins. Co. v. 900 Bar, Inc. , 887 F.2d 1213, 1218-21 (3d Cir. 1989). Stays in favor of administrative proceedings are similarly reviewed on an “effectively out of court” standard. See Gould , 705 F.2d at 1341; Hines v. D’Artois , 531 F.2d 726, 730-32 (5th Cir. 1976).It is difficult to identify many circumstances in which an “effectively out of court” situation would be presented for substantive issues based on concurrent reexamination. Of course, that doesn’t stop desperate plaintiffs from attempting this “Hail Mary Pass” of legal maneuvers.U.S. Patent 4,935,184, assigned to Sorenson Research & Development is at issue in Sorenson v. Lexar Media (NDCA). The ‘184 Patent is also the subject of an ongoing ex parte patent reexamination. The reexamination proceeding has reached the appeal stage; all claims stand currently rejected. With their court action stayed for some two years time awaiting the results of the patent reexamination, the plaintiff argued that two year delay was a violation of due process. This argument was then pursued to the CAFC. The CAFC considered the issue last week (here). As no surprise, the Hail Mary attempt failed. The CAFC explained, consistent with the well established case law cited above, that:Perhaps Sorenson should have been a bit more creative than opting for the Hail Mary. As one recent NDCA plaintiff can attest, the “end-around” is much more successful in lifting a stay pending patent reexamination in the NDCA.

Where an order has been granted to stay a patent litigation pending the outcome of a reexamination of the patent-in-suit, there is little likelihood that patent owner will be able to successfully appeal the decision ordering the stay of litigation. Such orders are generally not appealable, because they are not considered final decisions.  See Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983). There is an exception where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See Slip Track Sys., Inc. v. Metal-Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).

Federal courts have often found jurisdiction to review stays in favor of state court suits when the state court judgment would have a fully preclusive effect on the federal action or moot the federal action entirely.  See , e.g. , Cone , 460 U.S. at 10; Terra Nova Ins. Co. v. 900 Bar, Inc. , 887 F.2d 1213, 1218-21 (3d Cir. 1989). Stays in favor of administrative proceedings are similarly reviewed on an “effectively out of court” standard. See Gould , 705 F.2d at 1341; Hines v. D’Artois , 531 F.2d 726, 730-32 (5th Cir. 1976).

It is difficult to identify many circumstances in which an “effectively out of court” situation would be presented for substantive issues based on concurrent reexamination. Of course, that doesn’t stop desperate plaintiffs from attempting this “Hail Mary Pass” of legal maneuvers.

U.S. Patent 4,935,184, assigned to Sorenson Research & Development is at issue in Sorenson v. Lexar Media (NDCA). The ‘184 Patent is also the subject of an ongoing ex parte patent reexamination. The reexamination proceeding has reached the appeal stage; all claims stand currently rejected. With their court action stayed for some two years time awaiting the results of the patent reexamination, the plaintiff argued that two year delay was a violation of due process. This argument was then pursued to the CAFC. 

The CAFC considered the issue last week (here). As no surprise, the Hail Mary attempt failed. The CAFC explained, consistent with the well established case law cited above, that:

sorenson

Perhaps Sorenson should have been a bit more creative than opting for the Hail Mary. As one recent NDCA plaintiff can attest, the “end-around” is much more successful in lifting a stay pending patent reexamination in the NDCA.

Senate Bill Heads for Home Stretch this WeekWith Senator Feinstein’s amendment to strip out the first-to-file provision now defeated, it seems that the American Invents Act is headed for a vote this week. The cloture process invoked at the close of last week will effectively draw debate to a close this week, and, perhaps more importantly, preclude further amendment proposals.Last week, over 34 amendments were proposed, most of which offered little in the way of substantive change. (list of proposals here). While Senator Leahy tried to keep the debate on track last week, other senators seemed intent on using the bill as a platform for political grandstanding. With debate drawing to a close, and passage expected this week, eyes will now turn to the House companion bill.The House is not expected to propose any radical changes.  Thereafter, House changes will be reconciled with the Manager’s Amendment to S.23.  The patent reform legislation now appears to have significant political momentum. It is clear that both parties are looking to tout passage of the American Invents Act as a no-cost jobs stimul

With Senator Feinstein’s amendment to strip out the first-to-file provision now defeated, it seems that the American Invents Act is headed for a vote this week. The cloture process invoked at the close of last week will effectively draw debate to a close this week, and, perhaps more importantly, preclude further amendment proposals.

Last week, over 34 amendments were proposed, most of which offered little in the way of substantive change. (list of proposals here). While Senator Leahy tried to keep the debate on track last week, other senators seemed intent on using the bill as a platform for political grandstanding. With debate drawing to a close, and passage expected this week, eyes will now turn to the House companion bill.

The House is not expected to propose any radical changes.  Thereafter, House changes will be reconciled with the Manager’s Amendment to S.23.  

The patent reform legislation now appears to have significant political momentum. It is clear that both parties are looking to tout passage of the American Invents Act as a no-cost jobs stimulus.