What Can be Fixed with a Certificate of Correction?One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.But, what happens when a COC seems to embrace substantive change?Is the patent now invalid?Are intervening rights created?Is there any effect at all? Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:13. An apparatus for decoding a compressed digital video signal, comprising:a means for receiving a compressed digital video bit stream; anda means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.This situation seems analogous to an intervening rights defense for patent reissue. In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.The court is correct. The question here is not one of intervening rights, but validity of the COC.For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.

One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.

But, what happens when a COC seems to embrace substantive change?

Is the patent now invalid?

Are intervening rights created?

Is there any effect at all?

Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:

13. An apparatus for decoding a compressed digital video signal, comprising:

a means for receiving a compressed digital video bit stream; and

a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)

What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.

This situation seems analogous to an intervening rights defense for patent reissue. 

In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.

The court is correct. The question here is not one of intervening rights, but validity of the COC.

For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).

While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.

The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.

Patent Reform & the Red Herring Patent Interference Argument

As the patent reform debate continues on the floor of the Senate, the expected battle against the so-called “first inventor to file” (FITF) began today. Senator Feinstein D-CA, broke from the party line and assailed the proposed FITF provision as inefficient, encouraging incomplete filings, and disadvantaging small inventors. Sen. Feinstein had an impressive understanding of these very complex issues.

In attempting to rebut Sen. Feinstein’s position, two arguments were consistently repeated. First, it was argued that the “rest of the world” had a first inventor to file system. Ironically, this argument was made by the same folks beating the “America is the greatest innovator in the world” drum.

The second argument, was more troubling to me as a practitioner. This argument, justified the change to a FITF system based upon extreme patent interference statistics. In my opinion, the patent interference argument is a complete red herring.

The statistic repeated by the opposition was that only 1 patent interference, of 3 million patent applications (over the past few years), resulted in a victorious small inventor (i.e., small entity). In other words, the FITF debate as to small inventors being harmed is much ado about nothing. (since it is only relevant to expensive interference disputes). This argument is incredibly misleading.

Ignored in this half baked statistic is the degree to which antedating evidence is raised in application prosecution, patent reexamination, and even patent litigation. There are hundreds, if not thousands of antedating declarations filed every year in ex parte patent prosecution, ex parte patent reexamination, and inter partes patent reexamination under 37 C.F.R. § 1.131 (swear behind). In addition to USPTO declaration practice, antedating evidence may also be presented in patent litigation. In the presentation of such evidence, the patentee seeks to prove that their invention was conceived, prior to the critical  date of the applied prior art, and diligently reduced to practice thereafter. If this evidentiary showing is satisfied, the reference is removed as prior art. This is how the first to invent system currently works.

Antedating evidence is especially crucial in post grant practice before the USPTO. This type of declaration evidence can mean the difference between winning and losing valuable patent rights. (see past discussion here and here). It seems unfair that Congress is seeking to expand the ability to challenge patents via new post grant proceedings while at the same time removing a very powerful defense for patentees.

Antedating is very clearly not limited to high cost priority disputes (i.e., interference proceedings). 

Antedating evidence is often times crucial in countless proceedings before the USPTO and district courts.

If Congress wants to advocate becoming a follower in the interests of “harmony,” that’s one thing. But, to dismiss the proposed change as anything other than game changing is simply absurd.

S.23 (Manager’s Amendment) Primed for VoteS.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.Significant changes include a provision to end fee diversion, as well as some changes to the proposed proposed post grant landscape.The major post grant refinements of the amendment are as follows: -A transitional post grant proceeding (page 9) specific to business methods was added to S.23. This can be thought of as a special window, of limited time (4 year sunset provision) to challenge a business method patent (if sued, or charged with infringement of a qualifying patent).The business method provision also calls out the ability to stay a district court proceeding and codifies the current factor based analysis of the courts. The provision provides for interlocutory appeal of the denial of a stay. Senator Schumer D-NY commented on the floor today that he could not imagine a case that would not be stayed under this transitional program.  So, long story short, if you have a business method patents sue now….otherwise you might be forced to wait out the sunset of this provision.-a further post grant provision was added to clarify that a case cannot be stayed for post grant review is a motion for a preliminary injunction is pending.Other changes of interest, not relating to post grant practice:-Added a provision to discount multi-track program for small entities added by 50%.-Deleted venue and damage provisions (deemed moot by recent court action). Most of the actual floor debate had absolutely nothing to do with patent reform, or the manager’s changes. Instead, several democratic senators sought to include provisions relating to federal spending /debt ceiling, and salary controls for Congress should the gov’t be shut down.The “First Inventor to File” provision remains intact for now, although several Senators paid lip service to this aspect of the bill in anticipation of challenges.Once through the Senate, as seems inevitable now, the House will issue a companion bill, differences will then be reconciled. Senator Leahy stated at one point today that all of this could happen quickly, and a bill should be ready for presidential signature “very soo

S.23 appears to be on the verge of a Senate vote. Now entitled the “America Invents Act,” a manager’s amendment was offered today to S.23 that introduced quite a few changes. (markup here). In proposing the changes, the Senate was able to strip out some of the more controversial aspects of the bill in an attempt to appease critics.

Significant changes include  a provision to end fee diversion, as well as some changes to the proposed proposed post grant landscape.

The major post grant refinements of the amendment are as follows: 

-A transitional post grant proceeding (page 9) specific to business methods was added to S.23. This can be thought of as a special window, of limited time (4 year sunset provision) to challenge a business method patent (if sued, or charged with infringement of a qualifying patent).

The business method provision also calls out the ability to stay a district court proceeding and codifies the current factor based analysis of the courts. The provision provides for interlocutory appeal of the denial of a stay. Senator Schumer D-NY commented on the floor today that he could not imagine a case that would not be stayed under this transitional program.  So, long story short, if you have a business method patents sue now….otherwise you might be forced to wait out the sunset of this provision.

-a further post grant provision was added to clarify that a case cannot be stayed for post grant review is a motion for a preliminary injunction is pending.

Other changes of interest, not relating to post grant practice:

-Added a provision to discount multi-track program for small entities added by 50%.

-Deleted venue and damage provisions (deemed moot by recent court action). 

Most of the actual floor debate had absolutely nothing to do with patent reform, or the manager’s changes. Instead, several democratic senators sought to include provisions relating to federal spending /debt ceiling, and salary controls for Congress should the gov’t be shut down.

The “First Inventor to File” provision remains intact for now, although several Senators paid lip service to this aspect of the bill in anticipation of challenges.

Once through the Senate, as seems inevitable now, the House will issue a companion bill, differences will then be reconciled. Senator Leahy stated at one point today that all of this could happen quickly, and a bill should be ready for presidential signature “very soon.”

Courts Struggle with Realities of Post-Grant Practice

A standard component of any patent litigation is a protective order. Such orders will invariably include a “prosecution bar. ” The prosecution bar operates to ensure that individuals accessing such confidential data are not permitted to prosecute patent applications in the area of the litigated technology (usually for a fixed duration of time). Absent this bar, patent applications/claims could be fashioned by competitive decision makers involved in the litigation based on the confidential information of their rival.

With concurrent patent reexamination now commonplace with most patent litigation, the question becomes:

Should a prosecution bar extend to patent reexamination?   Continue Reading Should a Protective Order Bar Participation in Patent Reexamination?

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action.

The court seemingly reasoned that public policy favored stays pending patent reexamination, noting:

Although the Court acknowledges that certain issues may remain in dispute even upon conclusion of the reexamination proceedings, it also is cognizant of the many advantages to which courts have pointed that often merit a stay:

1. All prior art presented to the Court will have been first considered by an expert PTO examiner;

2. The reexamination may alleviate discovery problems relating to the prior art;

3. The suit will likely be dismissed if the reexamination results in effective invalidity of the patent;

4. The outcome of the reexamination may encourage settlement;

5. The record of the reexamination would likely be entered at trial and thus reduce the complexity and length of the litigation;

6. The reexamination will facilitate limitation of issues, defenses, and evidence in pretrial conferences;

7. Litigation costs to the parties and the Court will likely be reduced.

With respect to the factor (1) , the defendants have pursued an inter partes patent reexamination (95/001,245) of the Genzyme patent. Of course, ex parte patent reexamination would be a different story due to the lack of estoppel provisions. The remaining factors, are not as fact specific.

Interestingly, the defendant argued that if the case were stayed, the pendency delay of the patent reexamination they requested would be prejudicial; the court was not sympathetic to this argument.

The Genzyme patent relates to “Hectorol,” a highly lucrative drug for chronic kidney disease.

So why would the defendant want to go forward with the litigation while the Patentee sought a stay? The answer to that question relates to the nature of ANDA (Abbreviated New Drug Application) disputes. As long as the patent remains on the books, investment in a generic drug subject to a patent dispute is not attractive for investors, likewise, entry into the market may not be a prudent for Cobrek until the patent is officially dead. With expiration of the patent in three years, it appears that the cover offered by reexamination pendency is more attractive to Genzyme.

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

Upcoming CLE Programs My partner, Stephen Kunin is the former Deputy Commissioner for Patent Examination Policy at the USPTO. He will be speaking at a few CLE events of potential interest to the post-grant community in the coming weeks. On March 21-22, PLI’s 5th Annual Patent Law Institute will make its way to San Francisco. Steve will provide an update on patent reform status/progress. Details on the program (here). This program seems ideally timed with the respect to the expected legislative push of the coming weeks. On April 20, 2011, Steve will present at the AIPLA Webinar entitled “KSR and the Ripple Effect: Examining the Broad and Increasing Impact of KSR on Patent Litigation and Practice.” The program will examine substantive obviousness issues since KSR and the continuing disputes in the lower courts, and will further examine the prohibition against the use of “hindsight bias” or ex parte reasoning in resolving the obviousness question, and provide best practices for responding to these arguments. In this regard, Steve will explore the potential use of ex parte patent reexamination by Patent Owne

My partner, Stephen Kunin is the former Deputy Commissioner for Patent Examination Policy at the USPTO. He will be speaking at a few CLE events of potential interest to the post-grant community in the coming weeks. On March 21-22, PLI’s 5th Annual Patent Law Institute will make its way to San Francisco. Steve will provide an update on patent reform status/progress. Details on the program (here). This program seems ideally timed with the respect to the expected legislative push of the coming weeks. On April 20, 2011, Steve will present at the AIPLA Webinar entitled “KSR and the Ripple Effect: Examining the Broad and Increasing Impact of KSR on Patent Litigation and Practice.” The program will examine substantive obviousness issues since KSR and the continuing disputes in the lower courts, and will further examine the prohibition against the use of “hindsight bias” or ex parte reasoning in resolving the obviousness question, and provide best practices for responding to these arguments. In this regard, Steve will explore the potential use of ex parte patent reexamination by Patent Owners.

Patent Reform, The Next “Big Thing”Since being voted out of committee earlier this month, the Patent Reform Act of 2011 (S.23) has been awaiting floor debate. S.23 was first positioned behind the FAA bill in the legislative queue, and now seems secondary to the budget crisis. Although scheduled for debate on February 28th, it seems that S.23 will very likely have to wait out the last minute budget maneuvering. The budget debate may very well last right up until the March 4 deadline, if not beyond. Thus, it seems that the Senate will not debate the patent reform issue until the week of March 7th. (Beware the Ides of March, patent reform haters)On the upcoming debate, chief proponent, Senator Patrick Leahy stated: “I am pleased that the Senate will consider the Patent Reform Act after the recess. It is a critical part of our jobs agenda. Hundreds of thousands of patent applications are stalled at the Patent and Trademark Office. Among those is the application for the next great invention,”Leahy said. “Addressing the needs of the Patent and Trademark Office will unleash innovation and promote American invention, without adding a penny to the deficit.”Well, if inter partes patent reexamination heads to the Board as proposed (inter partes review), and post grant review also comes to pass, there will at the very least be job creation at the BPAI.Amendments to S.23 are expected. Meanwhile, the House has been hinting at a companion bill.Still a ways to go, but there is more momentum now than ever

Since being voted out of committee earlier this month, the Patent Reform Act of 2011 (S.23) has been awaiting floor debate. S.23 was first positioned behind the FAA bill in the legislative queue, and now seems secondary to the budget crisis. Although scheduled for debate on February 28th, it seems that S.23 will very likely have to wait out the last minute budget maneuvering. The budget debate may very well last right up until the March 4 deadline, if not beyond. Thus, it seems that the Senate will not debate the patent reform issue until the week of March 7th. (Beware the Ides of March, patent reform haters)

On the upcoming debate, chief proponent, Senator Patrick Leahy stated: 

“I am pleased that the Senate will consider the Patent Reform Act after the recess. It is a critical part of our jobs agenda. Hundreds of thousands of patent applications are stalled at the Patent and Trademark Office. Among those is the application for the next great invention,”Leahy said. “Addressing the needs of the Patent and Trademark Office will unleash innovation and promote American invention, without adding a penny to the deficit.”

Well, if inter partes patent reexamination heads to the Board as proposed (inter partes review), and post grant review also comes to pass, there will at the very least be job creation at the BPAI.

Amendments to S.23 are expected. Meanwhile, the House has been hinting at a companion bill.

Still a ways to go, but there is more momentum now than ever…

Deja Vu All Over Again in Patent Reexamination?A prejudice common to Patent Owners is that patent reexamination serves to re-hash previously distinguished prior art for harassment purposes. While this is certainly not the case, the difference between a previously considered issue and a “Substantial New Question of Patentability” (SNQ) need not be very pronounced.Since In re Swanson, the standard for establishing a (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-considered, if applied to the claims in a slightly different manner than that of the original prosecution.However, that is not to say that every proposed SNQ is…well, an SNQ.In such instances, when is the best time to object, and what is the proper procedural mechanism, petition or appeal? A recent decision of the BPAI has helped clarify these issues for ex parte patent reexamination.Last June, I explained the case of Ex parte Yasukochi et al, which pertained to an owner initiated ex parte patent reexamination. At issue in Yasukochi is U.S. Patent 7,034,083 (“‘083 Patent”) of Hisamitsu Pharmaceutical.  After the ex parte patent reexamination was initiated by Hisamitsu on certain prior art, the examiner introduced a rejection based upon a reference (Tsubota) previously applied in the original prosecution. The Patentee argued that this reference was being applied in the exact same manner as the original prosecution, and, as such, could not constitute an SNQ. On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure to be addressed by petition. Under the BPAI’s reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition was untimely at the time of the appeal. (since more than two months have elapsed since the rejection was made).The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination at the Board level (and beyond).A week thereafter, the USPTO determined that issues relating to an SNQ determination, while still considered a procedural question, are to be delegated the BPAI for a final determination. In the June 25, 2010 Federal Register Notice, the Office has clarified that assuming an SNQ is contested prior to appeal, either by petition or Patentee response, that the BPAI will now finally decide the issue. Likewise, for reexaminations pending prior to 6/25/10, if the issue was not raised prior to appeal, the Patentee may still raise the issue with the BPAI.So, in essence, Hisamitsu was afforded a chance to pursue the issue before the BPAI on rehearing.On further consideration, the BPAI found that the change in procedure was not applicable to rejections applied during patent reexamination. The Board reasoned that the proper avenue for such a review was still by way of petition, stating:We hold that the Notice does not delegate authority to the Board to decide whether a particular rejection made during the course of prosecution following a properly initiated reexamination is outside the scope permitted in an ex parte reexamination. The notice addresses those situations where a patent owner challenges an examiner’s threshold determinationthat a substantial new question has been presented. The Notice delegates the authority “to review issues related to the examiner’s determination that a reference raises a SNQ” to the Chief APJ. Notice, 75 Fed. Reg. 36,357. The examiner’s determination is not challenged in this appeal. Appellant requested that its patent be reexamined. Request for Ex parte Reexamination, filed March 22, 2007, pp. 1-6. The examiner held that a substantial new question had been raised by that request. Order Granting Request for Ex Parte Reexamination dated April 11, 2007, pp. 3-5. The examiner’s determination that the cited references raise a SNQ is unchallenged. (emphasis added)The Board seemed to emphasize throughout the rehearing opinion (here) that the Patentee had presented the initial SNQs necessary to initiate the reexamination. As to the Tsubota rejection, the examiner made clear in the rejection that the reference was previously considered. The examiner explained that previously submitted declaration evidence was ineffective against the reference as failing to account for certain claim language, hence the SNQ. Thus, even had Hisamitsu petitioned, the PTO seemed to have a legitimate ground for the re-presentation of the Tsubota reference. Interestingly, it appears the examiner searched for prior art during patent reexamination. Several references used in rejecting the claims were neither submitted by the patentee or of record in the earlier application prosecution; this is quite unusual.All is not lost for Hisamitsu, during the patent reexamination a broadening patent reissue was filed that remains suspended. Absent appeal to the CAFC, the reissue proceeding can now proceed. Perhaps Hisiamitsu will have more luck in this post grant proceeding. (12/108,934) 

A prejudice common to Patent Owners is that patent reexamination serves to re-hash previously distinguished prior art for harassment purposes. While this is certainly not the case, the difference between a previously considered issue and a “Substantial New Question of Patentability” (SNQ) need not be very pronounced.

Since In re Swanson, the standard for establishing a (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-considered, if applied to the claims in a slightly different manner than that of the original prosecution.

However, that is not to say that every proposed SNQ is…well, an SNQ.

In such instances, when is the best time to object, and what is the proper procedural mechanism, petition or appeal? A recent decision of the BPAI has helped clarify these issues for ex parte patent reexamination.

Last June, I explained the case of Ex parte Yasukochi et al, which pertained to an owner initiated ex parte patent reexamination. At issue in Yasukochi is U.S. Patent 7,034,083 (“‘083 Patent”) of Hisamitsu Pharmaceutical.  

After the ex parte patent reexamination was initiated by Hisamitsu on certain prior art, the examiner introduced a rejection based upon a reference (Tsubota) previously applied in the original prosecution. The Patentee argued that this reference was being applied in the exact same manner as the original prosecution, and, as such, could not constitute an SNQ. 

On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure to be addressed by petition. Under the BPAI’s reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition was untimely at the time of the appeal. (since more than two months have elapsed since the rejection was made).

The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination at the Board level (and beyond).

A week thereafter, the USPTO determined that issues relating to an SNQ determination, while still considered a procedural question, are to be delegated the BPAI for a final determination. In the June 25, 2010 Federal Register Notice, the Office has clarified that assuming an SNQ is contested prior to appeal, either by petition or Patentee response, that the BPAI will now finally decide the issue. Likewise, for reexaminations pending prior to 6/25/10, if the issue was not raised prior to appeal, the Patentee may still raise the issue with the BPAI.

So, in essence, Hisamitsu was afforded a chance to pursue the issue before the BPAI on rehearing.

On further consideration, the BPAI found that the change in procedure was not applicable to rejections applied during patent reexamination. The Board reasoned that the proper avenue for such a review was still by way of petition, stating:

We hold that the Notice does not delegate authority to the Board to decide whether a particular rejection made during the course of prosecution following a properly initiated reexamination is outside the scope permitted in an ex parte reexamination. The notice addresses those situations where a patent owner challenges an examiner’s threshold determinationthat a substantial new question has been presented. The Notice delegates the authority “to review issues related to the examiner’s determination that a reference raises a SNQ” to the Chief APJ. Notice, 75 Fed. Reg. 36,357. The examiner’s determination is not challenged in this appeal. Appellant requested that its patent be reexamined. Request for Ex parte Reexamination, filed March 22, 2007, pp. 1-6. The examiner held that a substantial new question had been raised by that request. Order Granting Request for Ex Parte Reexamination dated April 11, 2007, pp. 3-5. The examiner’s determination that the cited references raise a SNQ is unchallenged. (emphasis added)

The Board seemed to emphasize throughout the rehearing opinion (here) that the Patentee had presented the initial SNQs necessary to initiate the reexamination. As to the Tsubota rejection, the examiner made clear in the rejection that the reference was previously considered. The examiner explained that previously submitted declaration evidence was ineffective against the reference as failing to account for certain claim language, hence the SNQ. Thus, even had Hisamitsu petitioned, the PTO seemed to have a legitimate ground for the re-presentation of the Tsubota reference. 

Interestingly, it appears the examiner searched for prior art during patent reexamination. Several references used in rejecting the claims were neither submitted by the patentee or of record in the earlier application prosecution; this is quite unusual.

All is not lost for Hisamitsu, during the patent reexamination a broadening patent reissue was filed that remains suspended. Absent appeal to the CAFC, the reissue proceeding can now proceed. Perhaps Hisiamitsu will have more luck in this post grant proceeding. (12/108,934)

 

terms-of-disservice

Infamous Katz Portfolio Withers Under Pressure of Patent Reexamination

USPTO empirical data is quite helpful for determining the frequency by which claims are amended, cancelled, or confirmed in patent reexamination. Yet, when it comes to the overall efficacy of patent reexamination, USPTO statistics only tell part of the story.

A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to defendants. Likewise, such statements may limit the Patentee’s ability to distinguish the prior art.

In the ongoing patent reexaminations of the Katz portfolio, there have been significant victories for challengers. However, as made clear by the CAFC last week (In re Katz Interactive Call Processing Patent Litigation) not every victory shows up in USPTO statistics as cancelled/amended claims. Continue Reading Patent Reexamination Statements Hamper Katz Portfolio

When Can the Board Change the Target?In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).At issue in Stepan was the right to priority to a parent application under 35 USC  § 120. Further, a declaration submitted under 37 CFR § 1.131 was submitted to antedate certain 102(a) prior art.  Since the child patent disputed in Stepan was a CIP of the parent, the ability to benefit from the filing date of the parent was considered on a claim-by-claim basis. As such, the examiner determined that certain claims of the Stepan patent were not able to benefit from the 120 priority claim. For these claims, a reference to Singh was determined by the examiner to qualify as 102(b) prior art. Based on this statutory bar, no antedating was possible.The Patentee argued that the 120 priority claim was proper (i.e., 112 support in the parent for the claims), and that priority claim transformed the Singh reference to 102(a) art; thus the Patentee reasoned that the antedating declaration was able to remove Singh as prior art. On appeal, the Board found that the Examiner was incorrect as to 120, and that some of the disputed claims were entitled to priority. However, the Board found that the declaration was insufficient for these claims. In essence, the Board affirmed the examiner by changing the basis of the rejection from 102(b) to 102(a). Rather than seek a rehearing of this issue, Stepan took the dispute to the CAFC.The CAFC and the USPTO pointed out to Stepan that although this change of statutory basis would typically constitute a new ground of rejection, Stepan argued both 102(a) and 102(b) issues in their briefing to the BPAI, and before the examiner. The Patentee countered that had the ground been changed earlier, or designated as such in the affirmance, that the declaration evidence could have been corrected.While a rehearing request to the BPAI is not required before seeking appeal to the CAFC, the panel was not impressed with the failure to point out this issue to the Board prior to the CAFC appeal.Perhaps Stepan would have been better off exploring the controversial district court option to introduce new eviden

In November of 2010, the USPTO introduced a proposed rule package for practice before the BPAI. One focus of the new rules is to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course, mid-way through an appellate process.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer can be quite prejudicial during patent reexamination. This is because, once on appeal, there is no RCE-like procedural mechanism by which a patent holder can unilaterally restart prosecution. Last week, In re Stepan posed this very issue to the CAFC, albeit in the context of a Board affirmance in patent reexamination. (oral arg. here).

At issue in Stepan was the right to priority to a parent application under 35 USC  § 120. Further, a declaration submitted under 37 CFR § 1.131 was submitted to antedate certain 102(a) prior art.  

Since the child patent disputed in Stepan was a CIP of the parent, the ability to benefit from the filing date of the parent was considered on a claim-by-claim basis. As such, the examiner determined that certain claims of the Stepan patent were not able to benefit from the 120 priority claim. For these claims, a reference to Singh was determined by the examiner to qualify as 102(b) prior art. Based on this statutory bar, no antedating was possible.

The Patentee argued that the 120 priority claim was proper (i.e., 112 support in the parent for the claims), and that priority claim transformed the Singh reference to 102(a) art; thus the Patentee reasoned that the antedating declaration was able to remove Singh as prior art. 

On appeal, the Board found that the Examiner was incorrect as to 120, and that some of the disputed claims were entitled to priority. However, the Board found that the declaration was insufficient for these claims. In essence, the Board affirmed the examiner by changing the basis of the rejection from 102(b) to 102(a). Rather than seek a rehearing of this issue, Stepan took the dispute to the CAFC.

The CAFC and the USPTO pointed out to Stepan that although this change of statutory basis would typically constitute a new ground of rejection, Stepan argued both 102(a) and 102(b) issues in their briefing to the BPAI, and before the examiner. The Patentee countered that had the ground been changed earlier, or designated as such in the affirmance, that the declaration evidence could have been corrected.

While a rehearing request to the BPAI is not required before seeking appeal to the CAFC, the panel was not impressed with the failure to point out this issue to the Board prior to the CAFC appeal.

Perhaps Stepan would have been better off exploring the controversial district court option to introduce new evidence.