In inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.

The ‘247 design patent claims a design for a data card.  The data card is rectangular in shape, has rounded corners, has a horizontal strip extending across one face, and includes a circular aperture, as shown in Figure 1 of the patent below:

fig1 The ‘247 patent illustrates different embodiments wherein the circular aperture is positioned at different locations on the data card.

During inter partes reexamination, the Examiner adopted the third party requesters proposed rejection, rejecting the sole claim of the ‘247 patent under 35 U.S.C. § 103(a), relying on Keller (U.S. Patent No. 6,196,594) and Drexler (U.S. Patent No. 4,711,996) as primary reference.

fig2

fig3

 

                   Fig. 1 of Drexler                       Fig. 1 of Keller

As can be seen above, neither primary reference shows a data card containing any type of aperture.  Instead, the Examiner sided with the requester, Continue Reading BPAI Emphasizes Obviousness Test in Reversing Inter Partes Design Patent Reexamination

potluck1Patent reform changes to the post grant landscape seem inevitable with S.515 gaining traction.  As such, a brief review of other patent systems may shed some light on the mixture of provisions that may ultimately be offered in the U.S, and their degree of harmonization with other international post grant review mechanisms.

The following is a comparison of Reexamination/Invalidation Proceedings at the State Intellectual Property Office (SIPO) of the people’s republic of China to Inter Partes Re-examination Proceedings at the USPTO.  In contrast to the United States where invalidity can be determined by the Court or by the USPTO through Re-examination, the Chinese Patent Reexamination Board (PRB) has sole jurisdiction over patent validity issues in China.  The Courts do not have jurisdiction to invalidate a patent.  PRB decisions may, however, be appealed to the Beijing People’s Intermediate Court, and further appealed to the Beijing People’s High Court.

SIPO

USPTO

Interpartes Proceeding?

Yes

Yes

Third Party Requestor?

Yes

Yes, unless estopped

under 35 USC 317

Real Party in Interest?

No

Yes

Time for Request?

Yes

Yes

Period granted for response?

One month non-extendable

One to two months

Oral Proceedings permitted?

Yes

No, only on appeal in BPAI.

Grounds for Request?

Novelty, inventiveness, practical applicability, enablement, written description, patent eligible subject matter, double patenting and claim clarity (Reg. 64(2))

Novelty, Non-obviousness and Double Patenting

Limited to patents and printed publications.

Grounds limited to requested claims?

Yes

Yes

Narrowing amendments permitted?

Yes

Yes

New grounds against amended claims?

Yes

Yes

Panel?

Patent Reexamination Board – a sole member or a 3-5 member panel.

· PRB includes Commissioner of SIPO and Deputy Director

· Majority vote

Central Reexamination Unit -three primary examiners

· CRU includes SPE

· consensus

Right to Appeal?

Yes, within 3 months of decision

· Appeal is to the Beijing People’s Intermediate Court

· Further appeal is to the Beijing People’s High Court

Yes

· Appeal to BPAI

· Further appeal to the Federal Circuit within 60 days after BPAI decision.

Efficiency/ Total time to complete?

Two years to complete on average

Three years to complete on average, 5-8 years with appeal

Usage?

~ 2% of granted patents

~ 0.1% of granted patents

In Japan, since January 1, 2004, the Japan Patent Office (JPO) has conducted Continue Reading Comparison of Current U.S. Inter Partes Reexamination Proceedings to Asian Practices

 trend

Senate Judiciary Chairman Patrick Leahy (D-Vt.) is pushing Senate leaders to bring the Patent Reform Act of 2010 (S. 515), as amended March 4, 2010, to the Senate floor before the Memorial Day recess. Internet reports have Senate Majority Whip Richard Durbin (D-Ill.) stating that Leahy would like Senate leaders to vote on S.515 after the Senate completes work on financial regulatory and food safety legislation.

Senator Leahy was quoted last Thursday as stating  “We need to get to issues that concern the American people, including Wall Street reform and patent reform.”

It is quite possible that in order for S. 515 to pass the Senate quickly, it may have to be included in an Omnibus Appropriations Bill needed to fund federal agencies for FY 2010.

uspto_logo

This post has been corrected. An earlier version indicated an inaccurate filing rate that was based on calendar year rather than fiscal year . 

Yesterday, the USPTO released ex parte and inter partes reexamination statistics for the 1st Qtr of 2010. 2010 results to date show 126 inter partes reexamination filings, this number is equivalent to the total of all such requests filed in 2007.  

The operational statistics show the USPTO maintaining or exceeding the 2009 timing with respect to processing durations, with some commendable improvements in several categories.

With roughly 70% of inter partes reexamination filings identified as relating to a concurrent litigation (as compared to 30% for ex parte), for those entities taking advantage of an early filed inter partes reexamination, Congress and the USPTO have seemingly delivered on providing a viable alternative to patent litigation. Of course the CRU will need to continue to effeciently handle the growth in demand. Likewise, the Office may soon have the rug being pulled out from under them should patent reform come to pass, effectively transferring inter partes proceedings to the Board.

DepartmentYesterday, the Dept of Commerce released their position paper on certain aspects of the proposed patent reform legislation. The paper outlines economic justifications for post grant review, citing the well known inefficiencies and cost of patent litigation. Interestingly, the paper points out that post grant review is expected to be 50-100 times cheaper than patent litigation.

Previously I discussed the potential of patent reform legislation to supplant traditional patent litigation. There is significant question in my mind on how the USPTO, based on current resources, can quickly and effectively transform from the current examiner based reexamination model to a system managed by the newly labeled Patent Trial and Appeal Board.

With the expanded role of discovery practices provided by the post grant proposals, statutory time line (12-18 months), and oral hearings it seems to me that the legislative proposals cannot plausibly Continue Reading USPTO Supports Post Grant Aspects of S.515

cooperationAs pointed out in our earlier post on the issue, Joint Defense Agreements alone, do not result in  privity for inter partes patent reexamination purposes; at least according to the USPTO. 

Absent evidence of control and contribution with respect to an inter partes reexamination request, the USPTO has taken the position that cooperation for litigation purposes via JDA does not equate to privity for reexamination purposes pursuant to 37 C.F.R. §1.915(b)(7-8). Yet, in arriving at such a determination, the USPTO cautions that this conclusion is largely based on their administrative mandate, which does not provide for investigative resources and discovery power in this regard. As such, perhaps of greater concern to co-defendants is whether or not a court would find privity once a an inter partes reexamination concludes and estoppel attaches to the Requester.

Of course, due to the longevity of inter partes reexamination proceedings to date, the privity issue has yet to play out in a district court. Still, should a plaintiff recover a valid claim from an inter partes reexamination co-defendants will almost certainly Continue Reading Joint Defense Agreements & Inter Partes Reexamination (II)

Cancelled -- Rule 41.200(b)ass=”size-full wp-image-2162 alignleft” title=”cancelled” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/cancelled.gif” alt=”Cancelled — Rule 41.200(b)” width=”172″ height=”129″ /> The USPTO has announced that 37 C.F.R. 41.200(b) is no longer viable in light of the  Federal Circuit’s Agilent Technologies, Inc. v. Affymetrix[1] decision, and has thus cancelled the rule.  As discussed in earlier posts commenting on the Agilent and Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company[2] decisions, the Federal Circuit has concluded that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim should be interpreted in light of the specification of the targeted patent or application.  In contrast, Rule 41.200(b) required that a claim in interference be given its broadest reasonable construction in light of the specification in which it appears. With Rule 41.200(b) taken out of its misery, one has to wonder what guidance examiners will be given when examining claims “copied” to provoke an interference.  Will examiners be instructed to apply one claim construction when considering written description and another claim construction when applying prior art to the same “copied” claims?  Will the MPEP be updated?  If nothing else, the PTO’s decision to cancel Rule 41.200(b) in response to Agilent reinforces the prevailing opinion that interference practice is arcane. 

[1] 567 F.3d 1366 (Fed. Cir. 2009). [2] 590 F3d 1326 (Fed. Cir. 2010).

In re Suitco Surface, Inc. (Fed. Cir. 2010)

Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.

As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.

In reversing the BPAI, the CAFC noted that:

“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”

The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”

While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because the claims of  the Suitco Patent expired in 2007. As we pointed out a few weeks back, and as recently decided by an expanded panel of the BPAI, expired patents are interpreted based upon the standard established by Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986). Papst-Motoren requires that expired claims should be construed, if possible, to sustain their validity” and that the broadest reasonable interpretation was not to be used.

In the case of the Suitco Patent, it appears that while on appeal to the BPAI, the patent expired (2007). It does not appear that the Patent Holder ever briefed the issue at the BPAI or CAFC level. This oversight did not impact the reversal of claim 1, however, the more patent friendly Papst-Motoren standard may have made a difference for claims 4 and 6. It is unclear whether or not a rehearing would be permitted by the CAFC based upon the Patent Holder’s failure to raise the issue.

Going forward, the USPTO will now take up the case again, some 3 years after expiration. Assuming a 103 rejection of the reversed claims is plausible with the previously applied 102 art, the reexamination may continue.

Continued reexamination, and another BPAI appeal will certainly span another 3+ years. The result of another 3 years of reexamination and BPAI/CAFC appeal processing will ensure that the Suitco Patent is subject to reexamination proceedings 6 years beyond expiration. Thus, the USPTO will be expending resources for the next three years on a patent that, at the 6 year mark, is no longer enforceable (35 USC 286). At the 6 year mark, USPTO reexamination jurisdiction ends.

Interestingly, Suitco has an infringement action against 3M in an Iowa district court. The case is stayed pending reexamination. With the case stayed, and any continuing reexamination doomed to be cut off prematurely it seems to me that the infringement will escape review by the court if the stay is continued (see our earlier post on appealing stays pending reexamination) One is left to wonder when Suitco might get around to pointing all this out to the judge, or appeal the stay to the CAFC. Likewise, Suitco may seek rehearing in an attempt to revive claims 4 and 6 based on the mistake in claim interpretation standards.

Stay tuned.

mistakesAs provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.

Patent owners seeking reissue within two years of patent issuance are permitted the additional opportunity to broaden the issued claims, subject to intervening rights. Reissue applications filed outside this two year window may not broaden issued claim scope.

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution.  Important limits are placed on patent reissue with respect to Continue Reading Patent Reissue Doesn’t Fix Errors in Portfolio Management

6a00d83451ca1469e20120a7c6f685970b-800wiLast Friday, Chief Administrative Patent Judge of the USPTO’s Board of Patent Appeals and Interferences, Michael R. Fleming, presented an update on inter partes reexamination appeals (IPRA) at the ABA, IPL Section Conference.  At mid-year for 2010, pendency of BPAI decided appeals from date of Reexamination filing is 64.3 months. In 2010, 16 IPRA are in inventory of which 13 have been docketed at the BPAI.  6 BPAI decisions in IPRA have issued this year.

For those that missed it, Judge Fleming’s presentation is found here: inter partes reexamination statistics and BPAI information.

Further, the BPAI held its First Annual Conference on April 7, 2010 speakers included, Gregory Morse (Director of the USPTO’s CRU); Chief Judge Michael R. Fleming (BPAI); The Honorable Paul R. Michel (CAFC); The Honorable Randall R. Rader (CAFC); W. Todd Baker (Contributing Editor of PatentsPostGrant.com and Partner at Oblon Spivak, McClelland, Maier and Neustadt, LLP) as well as other members of the bar. Stephen G. Kunin (Contributing Editor of PatentsPostGrant.com and a partner at Oblon Spivak, McClelland, Maier and Neustadt, LLP) moderated the panel.

For those that missed this well received program, the materials may be found here