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.

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

Safety-Signs-1065A-lg1-300x300Previously, we explored what types of amendments to claims under post-grant review can trigger intervening rights.

As you may recall, claim amendments in current post grant proceedings at the USPTO (i.e., reexamination/reissue) create intervening rights. 35 U.S.C. 307 (ex parte) and 35 U.S.C. 316 (inter partes) describe the impact of amending claims in patent reexamination, incorporating 35 USC 252 (relating to intervening rights in reissue applications). In essence, the doctrine of intervening rights forecloses the recovery of past damages for patent infringement if a claim is amended after issuance of the patent.

The case of Kim v. The Earthgrains Co., k/n/a Sara Lee Bakery Group Inc., 01-cv-3895 (N.D. Ill.), presented the issue of whether a change in the transitional phrase (i.e., legally operative terms) of a patent claim could trigger intervening rights. Continue Reading Change in Transitional Phrase Can Trigger Intervening Rights

 

bloksAs a review for new readers, some IPR basics.

Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent.  Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents.  Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added.  There are two types of reexamination proceedings: ex parte and inter partes.  An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action.  The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse Continue Reading The Benefits of Inter Partes Patent Reexamination

hammerUnlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.

A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed. Continue Reading Shielding an Expert Declarant in Patent Reexamination from Deposition in Concurrent Litigation?

Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

anti-ms2As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable in that Texas court denied the stay request pending reexamination (what else is new). Judge Folsom’s rationale for denying the stay was somewhat interesting however, noting:

…unless all claims of the patents-in-suit are invalidated through reexamination, the reexamination process may actually complicate the above-captioned case by creating additional prosecution history estoppel and disavowal arguments that must likely be addressed, such as during claim construction.

I’m not sure the potential addition of non-infringement positions and favorable claim construction positions cuts in favor of denying the stay AT ALL. Perhaps the judge, was just going off on a tangent. In his defense, none of the asserted claims have been amended, so, he probably should have just stuck with that rationale.

Part II of a Guest Post by Brad Pederson

This is the second post addressing transition provisions outlined in the Manager’s Amendment to S. 515.  The first post addressed the transition provisions for interferences.  This post comments on the transition provisions for inter partes review.

Inter Partes Reexamination to Post Grant/Inter Partes Review – the transition provisions for switching over from the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB) contemplates a graduated ramp up with limits on the number of reviews that can be declared under regulations to be promulgated by the Director.  Sections 5(c)(2)(C) and 5(f)(2) of the Manager’s Amendment to S. 515 permit the Director to impose “a limit on the number of [reviews] that may be instituted during each of the first 4 years” following the cutover over date to FTFG.  While such a graduated transition would certainly be beneficial for the Office and the PTAB to learn how to handle these new review proceedings, the glaring question left open by these transition provisions is what happens to those requests for review that are above the cutoff limit in any given year.

One possible scenario would be that the queue for requesting such reviews would be a first-in-first-out (FIFO) queue where the guarantees of completion of the review within 12/18 months would apply only to the reviews below the cutoff limit which are “instituted” with the remaining requests simply staying in the FIFO queue until such time as one of the current reviews is completed.

PPG Comment: Providing a queue may lead to misuse of the inter partes review process.  For example, a plaintiff (especially non-practicing entities) may simply wait to file suit until the queue is filled.  Once filed, the defendant will be disadvantaged as S.515 requires filing of post grant/inter partes review by a deadline linked to the defendant’s answer to the complaint. Certainly the defendant could get in the queue but with a year delay, added to the 3 month determination delay, a defendant may be 10-15 months along in the litigation before getting a determination. Such a delay would undermine the ability of inter partes review to serve as an attractive alternative to litigation.  Furthermore the delay of the proceeding may impact the ability of defendants secure a stay of the litigation. Likewise, with post grant review available only during a 9 month period, a queue of a year seems inconsistent with the law as one could file a placeholder filing then use it as leverage with little cost.

Another possible scenario would be that the cutoff limit is a hard cap and that requests for inter partes reviews filed after the cutoff limit had been reached are simply returned to be refiled the next year.  Needless to say, the nature of the regulations to be promulgated by the Director regarding how the “limits” are to be handled will be an issue that will need careful consideration and attention in the event that Patent Reform Act of 2010 is enacted into law.

ShootFoot-735350As explained last week, a vocal contingent of House members appear unsatisfied with the recent momentum of the manager’s amendment to S.515. So, in the truest tradition of U.S. politics, they have set out to undermine the entire process by introducing a new draft measure. The draft is much narrower and provides only for the ability of the USPTO to set their own fees, fee diversion is not addressed.

The draft measure, is introduced by House Judiciary Chairman John Conyers Jr. (D-Mich.), and is purportedly to aid the patent office to boost its revenue to cope with a large backlog of patent applications and an outdated computer system. Of course, without a corresponding provision to stop fee diversion this measure does nothing for the USPTO.

Fortunately, in response to criticism of various bar organizations and stake holders, this measure has been withdrawn from today’s vote. Expect to see a slightly more comprehensive measure in the near term, addressing at least fee diversion practices.  The Patent Reform saga continues….

UPDATE:  Well, that didn’t take long, may I present the Patent and Trademark Office Funding Stabilization Act.

Congressman Conyers notes that: 

Specifically the bill gives the USPTO fee-setting authority, provides it the authority to impose a 15 percent temporary surcharge for all of the USPTO’s fees, and prevents fees collected from being diverted away from the agency for unrelated government programs.  This bill responds to the present fiscal crisis at the USPTO by helping the agency hire additional examiners, help reduce the backlog of patent applications, and improve patent quality.                                                                 

The bill we introduce today is not intended to impact the negotiations over the larger patent bill pending in the Senate.

Only a true politician could keep a straight face on that last part.

 

best-practiceIn light of the recent uptick in non-compliant requests for patent reexamination, last week the Central Reexamination Unit provided FAQs and best practices for preparing patent reexamination requests. The document is linked to the USPTO’s Patent Reexamination Information and Statistics page. This page is a great resource, including a lot of helpful information on pendency and CRU workload.

In addition to our previous posts on this topic (Part I & Part II), we will have more thoughts on the PTO guidance in the coming weeks.

The Importance of Interview Summaries in ex parte Patent Reexamination

Last Friday, Star Scientific (hereinafter “Star”) released an update on their ongoing ex parte patent reexaminations of U.S. Patents 6,425,401 & 6,202,649. The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.[1] As Star is a publicly traded company, and the litigation is fairly high profile, the update was widely reported to outlets such as the Wall Street Journal and CNBC.

The Star press release explained:

We received notice today from the US Patent & Trademark Office that it was terminating the reexamination of Claims 4, 12 and 20 of the “649” patent and claim 41 of the “401” patent that had been requested by RJ Reynolds in early 2009. The reason cited for the termination of the process was that the patent owner’s response to the Nonfinal Office Action that was filed on 11/10/09 allegedly did not include “a [separate written] summary of the interview, as is required by 37 CFR 1.560(b).” We want to make clear that the claims were not cancelled because reexamination of the claims found them invalid, but rather because the PTO asserted the patent owner did not comply with the procedural requirement for providing a written interview summary. The reexamination proceeding “is subject to reopening by the [Patent & Trademark] Office, or upon petition,” and Star’s patent counsel will file petitions today to reopen the proceedings.

We disagree with the termination in the strongest possible terms, and we are taking all necessary actions to reopen the reexamination process. Star’s patent counsel, Banner & Witcoff, believe that all appropriate steps were taken during the reexamination proceedings. The PTO failed to acknowledge a timely written summary of the interview that had been filed within one month from the date of the interview. The firm is confident that the petitions to reinstate the proceedings will be granted so that the claims can be evaluated on their merits.

Upon review of the Star reexamination file histories, I will at least agree that the terminations have nothing to do with validity.

On the other hand, in my opinion, appropriate steps were clearly not taken during the reexamination proceedings. Likewise, the petitions filed last week will almost certainly be denied.

First, some background into interviews in ex parte patent reexamination.

Unlike regular patent prosecution, patent reexamination (hence the existence of this blog) requires an understanding of different rules, procedures and statutes. One important difference in ex parte patent reexamination is that there are significant consequences for failing to submit a statement of the substance of the interview.

The requirements for an interview during an ex parte reexamination are similar to those for original patent prosecution with one important distinction. Namely, in patent reexamination, the consequence of missing the deadline for submission of the statement of the substance of the interview will result in the TERMINATION of the reexamination proceeding (37 C.F.R. 1.550(d)). An examiner in patent reexamination has no power to waive this requirement.

Once terminated, a petition to revive the reexamination proceeding for unavoidable or unintentional delay will then be necessary to revive the reexamination proceeding; this brings us back to the Star matter.

The good news for Star is that while the situation is professionally embarrassing for the parties involved, in almost all cases, getting back on track requires a simple petition filing. The bad news is that the petitions filed last week are incomplete.

To understand the problems with the petitions, a brief review of the Star interviews in ex parte patent reexamination is in order.

Star, a day prior to their interview, filed a list of anticipated topics for discussion during the interview. This document is typically referred to as an “interview agenda” and is sometimes requested by the PTO so that examiners may prepare for the interview. Once the interview of October 22, 2009 was completed, the attorney should have filed an “interview summary.”  As can be appreciated, the agenda identified topics Star’s attorney planned to discuss as of October 21, 2009 (i.e., when the agenda was faxed). Conversely, the summary would have identified the topics ACTUALLY discussed, the next day, on October 22, 2009. Simply stated, Star filed an agenda but did not file a summary.

In the current petitions, Star is curiously arguing that the interview agenda serves as the interview summary. Unless Star’s attorneys are clairvoyant, this position is a non-starter. The agenda was written a day prior to the actual interview. Furthermore, had the Office been willing to accept the agenda in place of the interview summary they wouldn’t have terminated the Star proceedings in the first place.

The purpose of the summary is to alert the public of what actually took place during the interview. For example, perhaps the Examiner brought up points of his own, perhaps the attorney added a topic between the agenda and the interview, perhaps different prior art came up in the interview, etc, etc.  Surely, the agenda may end up accurately reflecting the content of the interview discussions, but, that does not excuse the requirement that the Patent Holder file a summary.

The appropriate petitions to revive the proceedings are for unintentional or unavoidable abandonment. For such a petition to be proper, it must include the late filings (i.e., interview summaries) that caused the termination. In this case a petition under 37 C.F.R. 1.137 (b) would be appropriate that provides the missing interview summaries and a statement that the entire delay in providing the summary was unintentional; that’s it.

Instead, Star filed a petition that re-submitted the previously provided agenda, the missing summaries still have yet to be provided. A copy of  Star’s petition for the ‘401 Patent is found (here) (See the interview agenda of Exhibit A).

Just being an armchair quarterback here but, Star would be wise to file new petitions (that include the missing summaries) before they find themselves drafting yet another awkward press release.

[1] The commentary that follows is the opinion of the author and in no way constitutes legal advice. Neither the author of this post nor the firm of Oblon Spivak have any professional or financial interest relative to the parties involved, or the outcome of the dispute.

zetiaSubsequent to the Ex Parte Tanaka BPAI decision (Appeal No. 2009-000234) on December 9, 2009, Judge Jose L. Linares of the U.S. District Court for the District of New Jersey granted partial summary judgment invalidating four claims in the Zetia Reissue Patent U.S. Reissue Patent No. RE37,721 that were added in the reissue application of U.S. Patent No. 5,767,115.  The reissued claims were directed to the active ezetimibe species, which was already encompassed by the original ‘115 patent claims to a genus of hydroxyl-substituted azetidinone compounds.  As we previously pointed out, reissue patent applications do not fix all errors. Here as in Tanaka, “bullet claiming” via patent reissue is once again disputed as an error that may be corrected by reissue.

The civil action, Schering Corp. et al. v. Glenmark Pharmaceuticals Inc. USA et al., (Case No. 2:07-cv-01334), was filed in 2007, after Mumbai based Glenmark filed an abbreviated new drug application Continue Reading Zetia Patent Litigation Settles: Reissue Bullet Claims Questioned