ford

In a strange twist of fate, a Ford design patent was recently invalidiated in patent reexamination based upon a spy photo. In an appeal before the BPAI,  (ex parte Ford Global Technologies, 90/007,640), the Board affirmed a rejection of the underlying Ford Design Patent based upon an automotive spy photograph published in Trailer Life Magazine (Fig. 1), in combination with other art.

Figure 1 – Trailer Life Magazine’s Spy Photograph

In the automotive industry, new vehicle models, and designs are road tested prior to mass production. During such trials, automotive manufacturers go to great lengths to camouflage and otherwise conceal the appearance of the designs prior to public release. In some case, bulky, fake body panels are attached to the automobiles, likewise, the vehicles may be covered when on the grounds of the manufacturer to avoid photograph. Yet, an army of paparazzi exist, Continue Reading Paparazzi Photo Kills Ford Design in Patent Reexamination

connectRecently, we discussed the use of declaration evidence to advance prosecution in patent reexamination, and selecting declarants where concurrent litigation exists together with patent reexamination. In this post we explore a type of declaration commonly encountered in patent reexamination, declarations that attempt to identify objective evidence of non-obviousness.

MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.

–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts

As amendment of claims is not practical in many instances during patent reexamination (i.e., intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. Yet, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively connect this evidence to the claims. Deficient submissions typically fall into two main categories:

Continue Reading Connecting Secondary Indicia of Non-obviousness to Claims Undergoing Patent Reexamination

k1610558In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages.  This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. 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 infringers. This past week, such a reexamination misstep was analyzed Continue Reading Sometimes Confirmed Claims in Patent Reexamination Equal Defeat

ag_logo With Memorial Day now behind us, so much for the vote on S.515 before the holiday. Since Congressman Conyers floated the separate USPTO funding bill there does not appear to be much movement on the substantive issues of S.515.

Still, there will be a discussion of the policies at play in these legislative proposals next week (6/15) in DC (Georgetown).  The Program is described as:

Hear the perspectives of leading experts on the need for reform and the current legislative landscape, the pros and cons of bills under consideration, and the future implications for research, licensing, and litigation:

kicked outIn last week’s discussion on the topic of declaration usage in patent reexamination, we explained the benefit of such evidence in close cases, illustrated by both the dissent and majority comments on the limited evidence of record in ex parte Rehrig Pacific Company

Several days after the Rehrig Pacific decision, the BPAI once again emphasized the importance of such evidence.  On May 28, 2010, in inter partes reexamination 95/000,008 (Shimano v. Rolf Dietrich BPAI 2010-001847), the Board analyzed the issue of written support relative to newly claimed static tension ranges of a bicycle rim. With regard to the new limitation, explicit support did not exist in the specification, but the Patentee argued that one of skill in the art would nevertheless recognize such disclosure as provided in the specification.  In rejecting this argument Continue Reading Lack of Evidence in Patent Reexamination

ncomp

As detailed in our May 18, 2010 posting, non-compliant requests for patent reexamination have been increasing at the USPTO.  As the Office is now more closely scrutinizing the substance and procedural aspects of requests for patent reexamination, a checklist and FAQ were recently provided by the Office to aid practitioners in preparing compliant requests. The checklist was also discussed yesterday in Director Kappos’s Blog.

In addition to the guidance provided by the Office, the following snapshot of recent practice may be instructive:

ncompliant

LEGEND (click to enlarge figures)

1. SNQ: New, non-cumulative technological teaching not explained.
2. SNQ: Lumped together multiple distinct proposed rejections.
3. SNQ: Non-conforming IDS (no IDS, IDS references not used/explained, references used but not in IDS)
4. SNQ: Indefinite or inconsistent claim identification (including use of “at least”)
5. SNQ: Incomplete or improper proposed rejections.
6. SNQ: Otherwise not clear; has not applied every cited document to each claim.
7. Service/Certificate of service missing or inadequate.
8. Copies of references missing or not legible.
9. Contains subject matter not within the scope of reexamination.
10. Miscellaneous (Request not signed, Real party in interest not identified, 37 CFR 1.907 estoppel provisions not certified)

Based upon the past 6 months of data. close to 36% of reexamination requests are initially denied as non-compliant.  In the coming weeks, we will analyze the rate at which requests for patent reexamination are being denied.

In addition to the above noted PTO FAQ, our previous posts on effective requests for patent reexamination may be found below.

Effectively Presenting a Request for Patent Reexamination Part II

Effectively Presenting a Request for Patent Reexamination Part I

As noted in our post yesterday, prior to their Memorial Day break, the Federal Circuit issued two decisions touching upon patent reexamination practice, the second decision is discussed below.In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:An ultimately final rejection of the claims by the PTO, would fatally undermine the legal presumption of validity of the ‘737 patent and would be sufficient by itself to moot this entire portion of the appeal and warrant affirmation of the district court’s finding of invalidity.  However, the ex parte reexamination has not yet been completely resolved.Reexamination of the ‘737 Patent was ordered December 22, 2008 (Control No. 90/010,311, request filed October 10, 2008). On May 5, 2009 a first Office Action was mailed. On July 6, 2009 a response by the Patent Owner to the first Office Action was filed. On December 23, 2009 the final Office Action was mailed containing the final rejection of claims 1-6 of the ‘737 Patent.  A Notice of Appeal was February 23, 2010.  An Appeal Brief was filed April 23, 2010 by the Patent Owner. In other words, the reexamination spanned 18 months from initial request to appeal.Interestingly, the concurrent litigation was initiated by Dow Jones (declaratory judgment) in June of 2006.  So, patent reexamination was not sought until some 28 months later in October 2008. With the litigation out in front of the reexamination by some 28 months, how can litigants realistically expect the USPTO to overtake the litigation? Simply filing the reexamination request in a timely fashion would have very likely avoided the necessity for the CAFC appeal.Yet, the late filing at issue in this case is not at all exceptional. Defendants routinely opt to wait until an adverse Markman ruling before seeking reexamination. Of course, when the USPTO does not make up for the REQUESTER’S DELAY, it is the Office that is faulted.When all else fails, blame the governme

In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).

The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:

An ultimately final rejection of the claims by the PTO, would fatally undermine the legal presumption of validity of the ‘737 patent and would be sufficient by itself to moot this entire portion of the appeal and warrant affirmation of the district court’s finding of invalidity.  However, the ex parte reexamination has not yet been completely resolved.

Reexamination of the ‘737 Patent was ordered December 22, 2008 (Control No. 90/010,311, request filed October 10, 2008). On May 5, 2009 a first Office Action was mailed. On July 6, 2009 a response by the Patent Owner to the first Office Action was filed. On December 23, 2009 the final Office Action was mailed containing the final rejection of claims 1-6 of the ‘737 Patent.  A Notice of Appeal was February 23, 2010.  An Appeal Brief was filed April 23, 2010 by the Patent Owner. In other words, the reexamination spanned 18 months from initial request to appeal.

Interestingly, the concurrent litigation was initiated by Dow Jones (declaratory judgment) in June of 2006.  So, patent reexamination was not sought until some 28 months later in October 2008. With the litigation out in front of the reexamination by some 28 months, how can litigants realistically expect the USPTO to overtake the litigation? Simply filing the reexamination request in a timely fashion would have very likely avoided the necessity for the CAFC appeal.

Yet, the late filing at issue in this case is not at all exceptional. Defendants routinely opt to wait until an adverse Markman ruling before seeking reexamination. Of course, when the USPTO does not make up for the REQUESTER’S DELAY, it is the Office that is faulted.

When all else fails, blame the government.

band-aid Last Friday two decisions of the Federal Circuit touched upon patent reexamination practices.  In this post we will examine the first decision, Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc./Shanghai Meihao Electric Inc. v. Leviton Manufacturing Company, Inc. In this decision, the question of whether or not inequitable conduct may be cured in a subsequent, post-grant proceeding of the USPTO was considered. The question before the CAFC in Levitton was whether or not a summary judgment finding of inequitable conduct in the district court should stand. Perhaps, being overly cautious in view of the pending en banc review in Theresense, Inc. v. Becton Dickinson and Co., and indicating that summary judgment of inequitable conduct is the rare case, the court reversed the lower court. Confusingly however, the majority indicated that conduct during patent reexamination may be indicative of a “good faith” intent. Continue Reading Can Inequitable Conduct be Cured Via Patent Reexamination?

Silversea_Golf_Ball_Cup_squareAs pointed out in our post on shielding declarants from litigation discovery in patent reexamination, the submission of declaration evidence is quite commonplace in patent reexamination as compared to application prosecution. Last week the Board of Patent Appeals & Interferences (BPAI) issued two decisions affirming rejections of patents under reexamination in which declaration evidence, or the lack thereof was outcome determinative. In this post we will discuss the first case, ex parte Rehrig Pacific Company

In ex parte Rehrig Pacific Company, had declaration evidence been submitted, the outcome may have been very different.

In this appeal, the final rejection in ex parte patent reexamination 90/006,283 of claims 25-35 and 53-56 was considered by the BPAI. A key consideration in applying the art to the claims was whether or not the claim term “top frame” or “top frame assembly” was different from the pallet structure of the prior art (from the perspective of one of ordinary skill in the art). No declaration evidence from one of skilled in the art was presented on this key issue. Continue Reading Close Calls: Declaration Practice in Patent Reexamination

 

thinkingRejection in Ex Parte Patent Reexamination Flawed as to Means-Plus-Function Claim Analysis

On May 26, 2010 the BPAI affirmed-in-part the final rejection of certain claims in the ex parte reexamination of U.S. Patent 6,102,802 owned by Anascape LTD. The ‘802 Patent relates to gaming controllers, and was previously asserted in the E.D. of Texas against Microsoft and Nintendo. Since the commencement of the litigation, both defendants appear to have settled.

The BPAI affirmed the rejection of method claims 12-15 of the ‘802 Patent based on an obviousness rejection. More interestingly the rejection of means-plus-function claims (MPF) 3-11 and 16-19 was reversed…kinda Continue Reading Failure to Identify Specification Structure a Non-Starter for BPAI