In patent application prosecution, patent owners may file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37 CFR 1.114. However, these mechanisms are not available in patent reexamination. There may be occasions when additional prosecution may be beneficial in reexamination. For example, in certain situations special dispatch may be served by the submission of new evidence, prior art, or amendments. So, is a final action the end of the line? Continue Reading Petitions Requesting Continued Reexamination (RCR)
Are Third Party Opposition Petitions Permitted in Inter Partes Patent Reexamination or Not?
Last week, the Delaware District Court stayed the litigation proceedings in Enhanced Security Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No. 09-571-JJF, (June 25, 2010) at the defendant’s request in view of two ongoing patent reexaminations. As the Delaware court statistically seems more receptive to stays than say, the Eastern District of Texas Court in Marshall Texas, this development is not at all surprising.
Of more interest to me, is a recent petition decision (April 15, 2010) in the inter partes reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).
In responding to the first action, the Patentee filed a reply over the 50 page limit identified in ( 37 CFR 1.943). Recognizing this problem, the patentee, at the time of filing the reply, simultaneously petitioned for waiver of the page limit under 37 CFR § 1.183. In response, the Third Party filed an opposition petition under 37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition under 37 CFR § 1.183 to waive the rules to allow for consideration of their § 1.182 petition.
In deciding the patent owner’s petition, the Office of Patent Legal Administration (OPLA) granted the Patentee a waiver of the 50 page limit. Curiously, however, OPLA expunged the third party opposition petitions from the record and took the position that third parties have no right to oppose procedural filings of patent owners in inter partes reexamination proceedings. OPLA reasoned that the inter partes patent reexamination statutes only permit a single response to substantive issues of patentability. While I don’t necessarily disagree with OPLA’s action, I find the reasoning to be curious, as I have never seen an inter partes patent reexamination in which third party opposition petitions were not filed. In fact, the USPTO’s Electronic File System (EFS) has a selectable document code and corresponding description “Reexamination– Opposition filed in response to petition.” ……….What Gives? Continue Reading Are Third Party Opposition Petitions Permitted in Inter Partes Patent Reexamination or Not?
Senator Leahy Pushes Patent Reform on the Heels of Bilski
With patent reform seemingly on the back burner yet again, Senator Leahy stands on the In re Bilski soap box to rally supporters Monday, noting:
In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected. The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.
Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases. The Court’s decisions have moved in the direction of improving patent quality. While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress. The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.
Still, with summer recess approaching, it is unlikely that we will see much in the way of progress on S.515 until the fall.
Inconsistent Claim Interpretation Practices in Patent Reexamination
DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS?It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984). The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee. Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:1. According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and2. Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111Using this framework, the application of prosecution history in patent reexamination has been highly inconsistent.Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. ” MPEP 2111.01 (indeed, the appeal record of 95/000/017 extensively analyzed prosecution history in accordance with Phillips).Confusingly, other Board cases that analyze the “reasonableness” of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).I expect either the Board or CAFC to clarify this issue down the road, the sooner the bett
It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984). The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.
By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee. Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.
It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.”
The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.
The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:
1. According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and
2. Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111
Using this framework, the application of prosecution history in patent reexamination has been highly inconsistent.
Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. ” MPEP 2111.01 (indeed, the appeal record of 95/000/017 extensively analyzed prosecution history in accordance with Phillips).
Confusingly, other Board cases that analyze the “reasonableness” of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).
I expect either the Board or CAFC to clarify this issue down the road, the sooner the better.
BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination
Last Friday we explained the case of Ex parte Yasukochi et al, in which the Patentee argued that a rejection applied in reexamination was considered during original prosecution, and thus, could not constitute an SNQ. (The rejection at issue did not appear in the original request for reexamination but was newly applied by the Examiner during the reexamination). On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure that must be addressed by petition. 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.
Under the BPAI’s recent 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 would now be untimely (since more than two months have elapsed since the rejection was made).
Upon second thought, the USPTO has determined that issues Continue Reading BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination
Owner Initiated Patent Reexamination Backfires in Ex parte Yasukochi et al.
Hisamitsu Pharmaceutical requested ex parte reexamination of only claims 1, 3 and 6 of its own U.S. Patent No. 7,034,083 (the “’083 Patent”) based upon certain prior art. However, the USPTO ordered reexamination on all claims (i.e., claims 1-6) of the ‘083 Patent.
Generally, if a requester chooses not to request reexamination for a claim, that claim will typically not be reexamined. Yet, the decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office. See MPEP 2240; Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).
During reexamination of the ‘083 Patent the Patentee placed the features of claim 2 into claim 1. In response to the amendment, the examiner again rejected claims 1 and 3-6 over a reference cited in the original prosecution. On appeal, the BPAI in Ex parte Yasukochi et al. affirmed the examiner’s rejection of claims 1, and 3-6.
In its decision, the BPAI refused to consider the appellant’s argument that the rejection of the claims over old art was improper, because it did not raise a substantial new question of patentability (SNQ), holding that the question of whether an SNQ exists is a petitionable issue and not an appealable issue.
In order to properly contest the new rejection, the patent owner should have Continue Reading Owner Initiated Patent Reexamination Backfires in Ex parte Yasukochi et al.
Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense
When evaluating a request to stay litigation pending reexamination, district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set.
In an recent opinion, U.S. Magistrate Judge Janie S. Mayeron denied defendants’ motion to stay litigation pending ex parte reexamination because, among other reasons, the reexamination proceedings could not streamline the case. J. Blazek SKLO Podebrady s.r.o. v. Burton Int’l Enterprises, Case no. 08-cv-2354 (D. Minn. June 11, 2010). At first blush, Judge Mayeron’s rationale for denying the stay seemed illogical as it is certainly the case that, cancellation or amendment of the claims in the patents under reexamination could moot issues of validity, enforceability, infringement, and even damages.
Upon closer inspection, however, this case presents an unusual set of facts in that the Continue Reading Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense
Jury to Hear Evidence of Patent Reexamination Proceedings
In our February series on the use of reexamination evidence in concurrent litigation, specifically “Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV),” we observed that some courts are, at best, ambivalent about the presentation of evidence pertaining to a related patent reexamination for rebutting a charge of willful infringement. Those courts typically express concern that juries may become prejudiced or confused if they learn that the same agency that originally issued the patent — the PTO — has declared that a substantial new question patentability exists or has rejected the patent’s claims.
Notwithstanding those potential problems, a jury in the Eastern District of Texas may soon hear that three claims of the patent-in-suit currently stand rejected in reexamination proceedings. Continue Reading Jury to Hear Evidence of Patent Reexamination Proceedings
The Harvard Oncomouse Patent Reexamination, Over Before it Started?
The Harvard “oncomouse” in case you have never heard of it, is a strange little laboratory rodent genetically modified at Harvard (transgenic) to carry human genes. One of the more infamous uses of this technology is to grow human ears on mice. As no surprise this bit of genetic engineering was patented back in the 80’s and early 90’s (5,925,803 as well as other related patents) setting off quite a debate as to the metes and bounds of patentable subject matter, not only in the U.S., but around the globe. More recently, the ‘803 Patent has been subject to a request for ex parte reexamination. Of particular interest in this request for reexamination is the assertion by the Third Party that the patent is expired. Of course, anyone familiar with patent reexamination realizes that an expired patent may be subject to reexamination if it is still enforceable (i.e., within a 6 year window of expiration). The real surprise here is that the Third Party argued that the ‘803 Patent expired based on an overly broad terminal disclaimer of a parent application. In the filing, the Third Party requested comment from the USPTO on their terminal disclaimer theory; the USPTO surprisingly obliged. In doing so, the USPTO not only ended the reexamination before it started, but may have invited a lawsuit on the Office best fought by industry. Continue Reading The Harvard Oncomouse Patent Reexamination, Over Before it Started?
Judge Cites Length of Patent Reexamination in Denying Stay
Earlier this month, a federal judge in Florida cited to the PTO’s Ex Parte Reexamination Filing Data in denying an accused infringer’s request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc., Case No. 10-20528 (S.D. Fla. June 7, 2010). Judge Cecilia M. Altonaga pointed out that statistics show that “the reexamination process takes on average 25.4 months to complete, and another 24 months on average for appeals.” Defendant Littlefuse had filed its request for ex parte reexamination prior to the commencement of the district court action. Although judicial economy favored a stay, Judge Altonaga found the uncertainty in the length of reexamination proceedings disconcerting: “the length of the stay, if issued in this case, appears to be indefinite, and as such, is immoderate and unlawful.”