Silence in Original Prosecution History Used Against Patent OwnerAs discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.Yet another interesting BPAI case that appears destined for the CA

As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.

Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)

The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.

In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.

In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:

In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .

Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.

By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.

PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.

Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.

In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.

Yet another interesting BPAI case that appears destined for the CAFC.

USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.

Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

Every year is getting shorter never seem to find the time.Plans that either come to naught or half a page of scribbled lines……An interesting note appeared on one of the forums of Politico.com yesterday.POLITICAL INTEL: PATENT BILL READY FOR PRIME TIME – Aides on the Senate Judiciary Committee say they are confident their bipartisan patent reform bill could clear the full upper chamber this year, if only it was scheduled for a vote. In fact, the sources say that’s the primary reason the legislation has lingered – it’s too big for a UC agreement (unanimous consent), but would require enough floor time that Dems haven’t had a chance to fit it on the calendar amid a torrent of debate over jobs and taxes.As evidence, the aides point to the fact a copyright fix bill cleared the Senate just before recess on a voice vote, with the help of bipartisan committee support. They also say most of the Republicans on the Senate Judiciary Committee – including ranking member Pete Sessions – support the patent compromise Leahy and other Dems have labored over for years. Put simply, they say it’s doable, and perhaps sooner rather than later.That’s right folks, any day now….any day.* Readers have pointed out that the ranking member is actually “Jeff Sessions,” Pete Sessions being a member of the House.  Nevertheless I leave the text as is since I am quoting another source.

An interesting note appeared on one of the forums of Politico.com yesterday.

POLITICAL INTEL: PATENT BILL READY FOR PRIME TIME – Aides on the Senate Judiciary Committee say they are confident their bipartisan patent reform bill could clear the full upper chamber this year, if only it was scheduled for a vote. In fact, the sources say that’s the primary reason the legislation has lingered – it’s too big for a UC agreement (unanimous consent), but would require enough floor time that Dems haven’t had a chance to fit it on the calendar amid a torrent of debate over jobs and taxes.

As evidence, the aides point to the fact a copyright fix bill cleared the Senate just before recess on a voice vote, with the help of bipartisan committee support. They also say most of the Republicans on the Senate Judiciary Committee – including ranking member Pete Sessions – support the patent compromise Leahy and other Dems have labored over for years. Put simply, they say it’s doable, and perhaps sooner rather than later.

That’s right folks, any day now….any day.

* Readers have pointed out that the ranking member is actually “Jeff Sessions,” Pete Sessions being a member of the House.  Nevertheless I leave the text as is since I am quoting another source.

Monsanto Co. v. Geerston Seed Farms

In the recent Supreme Court case of Monsanto Co. v. Geertson Seed Farms, the Court shed some additional light on how district courts should assess the factors required to determine whether to impose an injunction.  The Monsanto decision did not concern patents, however it raises some interesting issues that would apply to injunctions in the patent context, particularly when a patent is found to be infringed in a district court litigation, but is also under concurrent reexamination.  See our earlier discussion of the use of patent reexamination to defeat an injunction for more information on this issue. 

Specifically, the Monsanto decision noted that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course.  If a less drastic remedy … was sufficient to redress respondents’ injury, no recourse to the additional and extraordinary relief of an injunction was warranted.”  Monsanto Co. v. Geertson Seed Farms, 130 S. Ct. 2743, 177 L. Ed. 2d 461, 481 (June 21, 2010).

In Monsanto, applying the traditional four-factor test for injunctions, the Supreme Court found that the District Court had abused its discretion in enjoining a federal administrative agency from deregulating a species of plant pending the completion of an environmental impact statement.  Id. at 481.  The Court felt that simply vacating the federal administrative entity’s decision could redress Respondents’ injury, thus it was unnecessary to resort to the “additional and extraordinary relief of an injunction.”  Id.

The potential effect of Monsanto on patent litigation involving concurrent reexamination was not lost on patent practitioners.  Just a few short weeks after the decision in Monsanto, in an amicus brief to the Federal Circuit, Verizon Communications, called attention to Monsanto’s aversion to injunctions.  Br. for Verizon Commc’n at 4, Tivo, Inc. v. Echostar Corp., No. 2009-1374 (Fed. Cir. July 2, 2010). In particular, Verizon applied the concepts of Monsanto to injunctions issued in connection with a patent pending reexamination, stating that “[c]ourts must ensure that injunctive remedies are imposed only where no legal remedy is adequate and that the public interest — including the interest in continuing innovation — is taken fully into account in crafting any injunctive remedy.”  Id. at 2.  Bearing in mind the point-of-view expressed by the Court in Monsanto, Verizon likewise questioned the appropriateness of permanent injunctions where a patent is undergoing concurrent reexamination.  Id. at 3-11.

With respect to the four factor test for determining whether a permanent injunction is warranted, and specifically the first factor, irreparable harm, Verizon’s amicus brief makes a compelling argument that a party found to infringe a patent may suffer irreparable harm when a permanent injunction goes into effect prior to the conclusion of the reexamination of the patent-in-suit.  “[T]he defendant – if a patent is invalidated – has no remedy against the patent holder as a result of losses occasioned by successful (though unjustified) patent enforcement.”  Id. at 9.  Verizon added that “defendant’s harm may stem from the plaintiff’s ability to strengthen its relative market position by improperly excluding the defendant from use of non-proprietary technology.”  Id.  This argument also finds support in Federal Circuit dicta that considers a patent “void ab initio” when found unpatentable as a result of reexamination.  Standard Havens Products Inc. v. Gencor Industries Inc., 996 F.2d 1236 (Fed. Cir. 1993) (per curiam).

The second factor of the four-factor test, the inadequacy of remedies available at law, mimics very closely the proposition that injunctions are harsh and should not be issued where a lesser remedy would be sufficient.  Especially where a patent is subject to pending reexamination proceedings, a lesser remedy of monetary damages may prove more appropriate.  Where monetary damages are not sufficient, a preliminary injunction should be imposed, if the reexamination proceedings have not reached their final stages and the patent owner is likely to prevail on the merits.

The harshness of injunctions may also play a part in balancing hardships between the parties, the third factor of the four-factor test.  Clearly, the Monsanto Court felt that an injunction, being such an extraordinary remedy, would present a great hardship for the party enjoined.  Especially where the party enjoined is an alleged infringer of a patent undergoing reexamination, and thus there are questions about the validity of the patent, a permanent injunction may prove too great a hardship for the enjoined party.

In connection with the last factor, public interest, it is often argued in patent cases that the public interest serves to uphold valid patents, eliminate invalid patents, and preserve innovation.  As Verizon stated, “[t]o ensure that patent law promotes rather than discourages innovation, it must calibrate infringement remedies to reflect the value of patents and the societal interests in continuing innovation and competition.”  Br. for Verizon at 1.  Where the validity of a patent is in question, enjoining the public from making, using, or selling the patented invention may not serve the public interest to uphold only valid patents or to preserve innovation.

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

center_prWith Congress on summer hiatus, and significant election uncertainty coming in the Fall, Patent Reform efforts are seemingly on hold (again). Still, last week, the USPTO was able to secure an additional $139 million in funding. H.R. 5874  permits the USPTO to retain $139 million in fees collected from patent applications and patent maintenance fees for fiscal year 2010 “salaries and expenses.” 

Senator Leahy, a backer of S.515, in passing the new PTO funding bill took the opportunity to emphasize the importance of the this perenially pending legislation, noting that more needs to be done to modernize and improve our patent system, which is a crucial component of our economic recovery… This bill [the S. 515 manager’s amendment] will provide the legal structure we need to allow our inventors to flourish. It will improve our economy and create jobs without adding a penny to the deficit.

The concept of patent reform is increasingly popping up in the news media as of late, perhaps as a sign of the White House PR machine attempting to sell the reform legislation as an economic stimulus that does not raise taxes.

The CBS video below implies an economic impact to the PTO pendency issue. CBS Video on USPTO Pendency

Also, see the New York Times article of last week selling changes to the patent system as a form of economic stimulus (here)

speedYesterday, the USPTO announced a pilot program, effective immediately, aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” will be triggered once a new ex parte reexamination request is accorded an initial filing date.

In devising the pilot program, the USPTO has explained that only 10% of Patent Holder’s take advantage of the opportunity to submit a Patent Owner statement. (Inter Partes Reexamination does not provide for Patent Owner’s Statements). The reason behind the lack of enthusiasm in filing Patent Owner statements is that the filing of such a statement entitles the Third Party to a rebuttal. Outside of the filing of such a statement, Third Party participation in ex parte reexamination is precluded by statute. Therefore, simply waiting for the Office to issue the first action effectively silences the Third Party for the remainder of the proceeding.

The Federal Register Notice explains that the new pilot program will seek to reduce overall pendency by cutting out this front loaded, dead time found in 90% of ex parte reexaminations. [T]he USPTO will contact the patent owner and request the optional waiver of the right to file a patent owner’s statement after the proceeding has been granted a filing date and before the examiner begins his or her review. This will enable the USPTO in suitable cases to issue the first Office action on the merits (including an NIRC) together with or soon after the order for reexamination, and thereby reduce the pendency of the proceeding by about three to five months.

This pilot program is a very positive step, and makes perfect procedural sense. The USPTO is to be commended for attempting to tackle the pendency issue. Yet, I expect that few Patent Holders, given the chance, will take advantage of the program. Continue Reading USPTO Pilot Program Announced to Accelerate Ex Parte Patent Reexamination

TripAs discussed last week, patent reexamination is often leveraged concurrent with district court litigation for strategic purposes. As district court pendencies continue to rise, even in districts known for relatively speedy resolutions, an early filed reexamination will very likely mature in time to provide additional fodder for claim construction. (Markman). In some cases, even where the reexamination concludes favorably to the Patent Holder, the discussion in the reexamination prosecution history may still carry the day.

Last week, a Markman Order was issued in Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., Civ. No.09-72-SLR (July 26, 2010) (More info on the Sigram Schindler patent reexamination is found here)

Interestingly, in the Markman Order, Sigram Schindler is called out by the Court for taking inconsistent positions before the USPTO in patent reexamination. Continue Reading Arguments in Patent Reexamination Trip Up Sigram Schindler

 

waiveBPAI Affirms Claims of Expired Patent in Ex Parte Reexamination

The rejection of all claims (save 25, which was confirmed) of expired Patent 4,925,294, (hereinafter, “‘294 Patent”) owned by Three-Dimensional Media Group LTD., was affirmed by the BPAI on Monday. In affirming the rejection, at issue in the appeal was the meaning of “3-D” as recited in the claims of the ‘294 Patent.

The Patent Holder took the position that the term “3-D” was to be accorded a special meaning. In this regard, the Patent Holder claimed that at the time of filing the Applicant was being their own lexicographer MPEP 2111.01 (IV). In support of this assertion, the Patent Holder presented declaration evidence from persons skilled in the art that identified the meaning of “3-D,” in the context of the ‘294 Patent, as defining stereoscopic 3-D.

The BPAI rejected the Patent Holder definition and declaration evidence as inconsistent with the specification.

Since the Board found that “3-D” was not limited to only stereoscopic 3-D as advanced by the Patent Holder, the majority refused to provide an explicit plain meaning construction of 3-D. Instead the majority explained that by advancing the special (i.e., Applicant being their own lexicographer) definition, the Patent Holder did not dispute the plain meaning of “3-D”, and had therefore waived any right to dispute plain meaning. (citing Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)). As a result, the claim term “3-D” was defined inferentially, that is to say the term was identified as being broader than the Patent Holder’s asserted definition, thus met by the art of record.

Yet, can such a fundamental exercise as a plain meaning claim construction be waived, especially for an expired patent that must follow the Papst-Motoren claim interpretation standard to preserve validity?  Continue Reading BPAI Applies an Implied Claim Construction in Patent Reexamination Appeal

(click to enlarge embedded images)Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. Illustrated below is a comparison of reexamination request rates (non-anonymous) for U.S. vs. Japanese filers. To the untrained eye, the relative filing rates seem entirely logical for a U.S. based, intellectual property right. Yet, when considering that the vast majority of the top patent filers in the U.S. are in fact Japanese companies, domestic dominance in patent reexamination is especially surprising.Clearly, U.S. requests for patent reexamination significantly outpace Japanese requests (including both ex parte and inter partes requests). Indeed, when the chart above is filtered to exclude those Requesters initiating patent reexamination of their own patents (not uncommon for Japanese filers), the contrast between the two filing rates is all the more stark. Certainly, some anonymous reexamination requests (ex parte) may be originated by Japanese filers, yet, this statistic would not be at all significant in my experience.So, why aren’t the Japanese embracing the offensive use of patent reexamination to the extent of U.S. companies?It may be that past prejudices still linger in Japan as to the effectiveness and reliability of patent reexamination at the USPTO. Prior to changes in the law of patent reexamination that created inter partes reexamination in 1999, (AIPA of 2002, In re Swanson), and changes to the handling of reexaminations internal to the USPTO (Central Reexamination Unit), patent reexamination was universally viewed as a fruitless exercise.In addition to the poor track record of past patent reexamination practices at the PTO, historically, Japanese companies are more likely to settle disagreements with competitors by cross-license rather than by overt, offensive actions. Indeed, due to the sheer size of their patent portfolios, Japanese companies are unlikely to have had much negative experience being attacked in patent reexamination by competitors (see below). Thus, there appears to be a general unfamiliarity with the offensive value of patent reexamination.Still, Japanese companies are also targeted by “patent trolls” on a regular basis. In this respect, the misfortunes of Japanese companies are no different than U.S. companies. As a result, Japanese companies are just as likely to benefit from some of the strategic opportunities  offensive patent reexamination has to offer.Perhaps once the changed landscape of patent reexamination in the U.S is widely appreciated in Japan, the Japanese filing rate will more closely track the U.S. filing ra

Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.

Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. 

Illustrated below is a comparison of reexamination request rates (non-anonymous) for U.S. vs. Japanese filers. To the untrained eye, the relative filing rates seem entirely logical for a U.S. based, intellectual property right. Yet, when considering that the vast majority of the top patent filers in the U.S. are in fact Japanese companies, domestic dominance in patent reexamination is especially surprising.

pic2Clearly, U.S. requests for patent reexamination significantly outpace Japanese requests (including both ex parte and inter partes requests). Indeed, when the chart above is filtered to exclude those Requesters initiating patent reexamination of their own patents (not uncommon for Japanese filers), the contrast between the two filing rates is all the more stark. Certainly, some anonymous reexamination requests (ex parte) may be originated by Japanese filers, yet, this statistic would not be at all significant in my experience.

So, why aren’t the Japanese embracing the offensive use of patent reexamination to the extent of U.S. companies?

It may be that past prejudices still linger in Japan as to the effectiveness and reliability of patent reexamination at the USPTO. Prior to changes in the law of patent reexamination that created inter partes reexamination in 1999, (AIPA of 2002, In re Swanson), and changes to the handling of reexaminations internal to the USPTO (Central Reexamination Unit), patent reexamination was universally viewed as a fruitless exercise.

In addition to the poor track record of past patent reexamination practices at the PTO, historically, Japanese companies are more likely to settle disagreements with competitors by cross-license rather than by overt, offensive actions. Indeed, due to the sheer size of their patent portfolios, Japanese companies are unlikely to have had much negative experience being attacked in patent reexamination by competitors (see below). Thus, there appears to be a general unfamiliarity with the offensive value of patent reexamination.

pic3

Still, Japanese companies are also targeted by “patent trolls” on a regular basis. In this respect, the misfortunes of Japanese companies are no different than U.S. companies. As a result, Japanese companies are just as likely to benefit from some of the strategic opportunities  offensive patent reexamination has to offer.

Perhaps once the changed landscape of patent reexamination in the U.S is widely appreciated in Japan, the Japanese filing rate will more closely track the U.S. filing rate.