clippy_buttonsAs has been widely reported this week, U.S. Patent No: 5,787,499 has been confirmed by the USPTO in ex parte reexamination 90/010,347. The patent has been widely reported as impacting the popular Microsoft Word software, and the subject of the dispute between i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx no. 07-CV-113). The favorable termination of the reexamination is not very surprising to those following the case as it is clear Microsoft’s use of reexamination in this case was to win a limited battle, not the war.

In our earlier post on the i4i patent reexamination, we noted that the request for reexamination was filed in November 2008. The request was granted in early 2009. Despite the fact that the Texas suit was initiated in early 2007, a request for reexamination was not filed until some 20 months later. In Texas, stays are not as commonly granted for patent reexaminations, certainly not to the extent of some of the more extreme districts. As such, it appears as though Microsoft determined the odds of obtaining a stay pending reexamination slim, and chose to follow the traditional litigation path; that is, right up until trial.

Based upon the briefing, it appears as though Continue Reading Microsoft’s Late Use of Patent Reexamination in the i4i Dispute

It would be so nice if something made sense for a change — Alice (in Wonderland)

Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851).  Claim 1 recites the following elements:

A portable computer unit comprising:
(a) a portable computer housing;
(b) computer means positioned. . .
(c) flat panel display means interfaced to . . .
(e) closure panel means having. . .
. . .said computer housing means and said closure panel means
incorporating electrical connecting means adapted to . . . (emphasis added)

Curiously, the Patent Owner took the position that ONLY the electrical connecting means invoked 35 U.S.C. § 112 6th paragraph (i.e., means-plus-function-element). In other words, even though most other claim elements used the same style of “means” language, these features were somehow different.[1] Understandably, the examiner was perplexed as to the rationale for the distinction. As a result, it appeared that the Examiner instead applied a broadest reasonable interpretation to all of the elements that recited “means” language.

Although, in the end, the BPAI affirmed the examiner’s rejection, the decision was based on a means-pus-function interpretation.  In the decision, the BPAI noted at page 3:

The examiner has a point that it is hard to discern any principled difference between the way “means” is used in the claim such that one skilled in the art would understand that only one such use invokes paragraph 6. The ordinary remedy for such confusion is to reject the claim under 35 U.S.C. 112(2) for indefiniteness. The Office does not reject original patent claims in reexamination under § 112, however.

Next, in affirming the Examiner’s rejection of claim 1, the BPAI analyzed the claims under 35 USC § 112 anyway. As I pointed out in an earlier post on the problem of examining means-plus-function elements in patent reexamination, it is impossible to examine mpf claims without analyzing specification support for the claim elements under 112 paragraph six.

In this regard, MPEP 2258 (II) notes that:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . .  (emphasis added)

As can be appreciated, there is no distinction made between paragraph two or paragraph six in MPEP 2258, or any where else in the patent reexamination statutes or rules.

Of course, 35 U.S.C. § 112 6th provides:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis added)

So, the BPAI seems to be indicating that paragraph six issues will be considered in patent reexamination so that the interpretation of the reexamination statutes is not inconsistent with another statute (35 USC 112, 6th). Certainly, as further outlined by MPEP 2181–2183, it is impossible to examine a means-plus-function claim without considering the structure and acts described in the specification; otherwise there is no claimed structure by which to compare any structural equivalence of the prior art. See MPEP 2183 (C)

In other words, save paragraph six, the Office must ignore 112 issues or be forced to identify deficiencies deemed outside the scope of reexamination. Yet, once a paragraph six analysis is required, the Office in fact analyzes specification support. In such circumstances does it make any sense at all for the USPTO to ignore all other 112 issues ?

[1] My guess is that the Patent Owner either did not want a narrow interpretation of other claim elements for litigation purposes, or was constrained by arguments to this effect made in an earlier litigation.

imagesYesterday, the USPTO announced that it will hold a workshop on promoting innovation.  The workshop will explore the affect of U.S patent policy and competition policy on innovation.

The morning session will include a panel of academics discussing PTO pendency issues. Other sessions will address injunction practice post Ebay, and the impact of standard setting on patent policy and innovation. Director Kappos as well as other high ranking officials will be in attendance and are scheduled to speak on various topics.

The workshop presents a rather eclectic mix of topics and speakers.  Although there is nothing on the agenda relating to post grant issues, perhaps reexamination will be touched upon during the injunction discussion (see our earlier post on this topic).

stemOn April 28, 2010, The USPTO’s Board of Patent Appeals and Interferences (BPAI) rejected claims 1-3 of Wisconsin Alumni Research Foundation’s (WARF) “Primate Embryonic Stem Cells” Patent (U.S. Patent No. 7,029,913, the ’913 patent).  The WARF patent is licensed to Geron Corporation and is subject to Inter partes Reexamination as Control No. 95/000,154.  The BPAI reversed the Examiner’s decision to allow the claims. The claims cover pluripotent human embryonic stem cells (ES) cultured in vitro. The request for inter partes reexamination of the ’913 patent was filed on July 17, 2006 by the Public Patent Foundation (PubPat) on behalf of The Foundation for Taxpayer & Consumer Rights (FTCR), now known as Consumer Watchdog. The BPAI decision does not affect two other WARF embryonic stem cell patents (U.S. Patent Nos. 5,843,780 and 6,200,806) that were challenged by FTCR in reexamination proceedings resulting in confirmation of the patentability of their claims in reexamination certificates. However, the rejection of the ’913 patent claims may have a reverberating effect on the stem cell industry. Following an order granting inter partes reexamination of the ’913 patent on September 29, 2006, the Examiner rejected claims 1-3 based on anticipation and obviousness rejections. However, in the Action Closing Prosecution Continue Reading BPAI Rejects WARF Stem Cell Patent Claims in Inter Partes Reexamination Appeal

snipers With the Senate momentum on Patent Reform Bill S.515 seemingly leading to a vote before Memorial Day, House members seeking a voice in the final bill have focused opposition efforts on the PTO funding/fee diversion aspect of the bill.

Wednesday, in an exchange with USPTO Director David Kappos during an oversight hearing with the House Judiciary Committee, Chair John Conyers (D-Mich.) and Rep. Lamar Smith (R-Texas) probed the USPTO on whether or not the PTO funding should be severed from S.515 as a stand-alone bill.

As one of the drivers behind moving the bill forward is clearly the urgency of the PTO funding issue, the sniping from the House appears to be more of a tactic to force compromise rather than a genuine interest in a separate bill. Certainly, taking the wind out of the Senate sails by removing fee diversion could provide an opportunity to bog down S.515 in further debate.

During the hearing Conyers, stated that efforts to reach a deal with the Senate on S.515 are not progressing noting that the cooperative efforts seem “to be stalled somewhere between House and Senate.” Whether this statement is an accurate depiction of the true situation or simply the grandstanding of those on the sideline remains to be seen. Discussions between the House and Senate on S.515 remain ongoing.

Director Kappos stood firm, indicating that the Patent Reform legislation was needed, and that USPTO funding should remain an aspect of the broader bill. Of course, the political maneuvering is likely to continue as the bill winds it’s way through Congress.

Guest Post by Brad Pedersen

With the recent announcement from the Obama administration supporting the Manager’s Amendment to Senate Bill S. 515 and with the possibility that the Bill could soon get to the Senate floor for a vote prior to Memorial Day, it is time to take seriously some of the details about transitioning from (i) the current interference/reexamination scheme to a new derivation/review scheme and (ii) 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).  This post is the first of a two part series and addresses the transition provisions for interferences. Interference to Derivation – Because S.515 will change the U.S. patent system from a first-to-invent (FTI) system to a first-inventor-to-file with grace period (FTFG) system, as was discussed in an earlier post, interferences will be replaced by a new “derivation proceeding” to determine whether the second applicant for a patent was in fact the first inventor to file for a patent.  Although, the Manager’s Amendment is a marked improvement of the prior version of S. 515, the transition period for dealing with the last potential interferences appears to be too short.  Section 2(m)(2) of the Manager’s Amendment to S. 515 reads as follows: (m) EFFECTIVE DATE. – …  (2) INTERFERENCE. – For any application for patent, or any patent issuing thereon, to which the amendments made by this section apply [an FTFG case] which contains the same claimed invention as defined in section 100(j) of title 35, United States Code, as in an application for patent, or any patent issuing thereon, to which the amendments made by this section do not apply [an FTI case], an interference may be declared within 2 years after the date of the enactment of this Act and conducted as provided in section 135 or 291 of title 35, United States Code, in effect on the day prior to the date of the enactment of this Act to determine questions of priority of the inventions, and the Director may issue a patent for the claimed invention to the applicant who is adjudged the prior inventor. Because the prosecution cutover to FTFG occurs for applications

arrow-pointing-two-directions-400x400Different standards lead to different results in patent reexamination and district court litigation

During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen  interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.

The Federal Circuit  overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.

In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing  Baxter to file an appeal Continue Reading District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)

EDVA District Court Judge Payne denied the accused infringers’ motion to stay a patent infringement suit pending the outcome  of reexamination of the patents-in-suit in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-cv-620 (E.D.Va. March 31, 2010).   ePlus filed a patent infringement suit in May, 2009, against Lawson Software, Inc., and others alleging infringement of its patents covering electronic sourcing systems, which allow potential buyers to identify items for purchase in a plurality of electronic catalogs and create a requisition order for purchase of the selected items.

SAP America, Inc. and SAP AG had filed for an ex parte reexamination of one of the patents-in-suit.  The  USPTO ordered reexamination of the patent.  ePlus’ appeal to the BPAI in the ex parte reexamination proceeding has not yet been decided.  Later Lawson  filed an inter partes reexamination request against other patents-in-suit.

Judge Payne considered the standard set forth in  Landis v. N. Am. Co., 299 U.S. 248 (1936) to determine: (1) whether discovery was complete and a trial date was scheduled; (2) whether a stay would simplify the matters at issue; and (3) whether a stay would unduly prejudice  the court  proceedings or clearly disadvantage the non-moving party.

Judge Payne determined that because the trial date was set for September, 2010, the first factor weighed against a stay.  As to the second factor, he noted that completion of the reexamination proceedings would simplify some of the claim validity questions at issue, particularly if there were final rejections of the patent claims by the USPTO upheld on appeal requiring dismissal of the patent infringement suit or encouraging the  parties to settle.  Although the outcomes of the patent reexamination proceedings would  not dispose of all the issues, in litigation such as subject matter eligibility for patenting, claim indefiniteness, improper inventorship, or inequitable conduct  raised by the defendants, the Judge found this factor weighed  in favor of  granting a stay of the litigation.

However, the Court concluded that ePlus made a strong showing of prejudice, because of the lengthy delay that the stay would impose on the litigation, and the probability that it could lose its right to injunctive relief  if the patents  expired prior to completion of the reexamination proceedings. The lengthy process of reexamination compelled the Judge to deny the motion for stay of the litigation in order to proceed to trial.

myrtle-beach-bigThe March 4, 2010 Manager’s Amendment to S. 515, known as the Patent Reform Act of 2010 may be substituted for the Senate Judiciary Committee-passed version of S. 515, and then be considered by the Senate as a whole prior to Memorial Day. It is expected that Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to the “hotline” procedure which will substitute the Manager’s Amendment for the passed version of S. 515, and permit the bill to pass the Senate without debate. The hotline bill is then recorded in the Congressional Record as a being agreed to by unanimous consent.

Furthermore, hotlines can include amendments, but limit debate and discussion. A key to passage of the bill is that it does not require individual votes on the amendment or the underlying bill. However, any Senator can throw a “monkey wrench” into the process by putting a hold on the bill, if he or she objects to its provisions. To counter this action, the Administration has thrown its support behind the legislation and urges that the bill be passed this year. Such action may ensure that Democratic Senators line up in support of the hotline and that Republican Senators can be persuaded to not put a hold on the bill. A hotline request is expected to be sent from Republican Minority Leader Mitch McConnell (R-KY) to Republican Senators.

For a more detailed discussion see the IPWatchdog post of earlier this week.

craps_20game_croppedUnited States District Court for the Northern District of California, San Francisco Division Judge Richard Seeborg issued an Order on April 26, 2010 denying a motion to stay Ultra Products, Inc. v. Antec, Inc. (Civil Action No. C 09-04255 RS) pending the outcome of a possible inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,133,293 (the “‘293 patent”). The ‘293 patent is directed to a modular computer power supply that is designed to reduce problems with personal computer cords. A decision on a refiled request for inter partes reexamination dated March 29, 2010 based on Neo-Power 480 materials has not yet been made by the USPTO. In his decision to deny the stay of the patent infringement litigation, Judge Seeborg weighed three factors. The first two factors involve whether a stay would unduly prejudice or present a clear tactical advantage to the nonmoving party and will simplify the issues in question and trial of the case. The third factor is whether discovery is complete and a trial date has been set. He concluded that taken together these factors weigh against a stay of the patent litigation. The judge exercised his discretion to deny the motion for stay on the basis that the stay would threaten Continue Reading ND California Stay Pending Patent Reexamination Crapshoot Continues