breakingnewsass=”alignleft size-full wp-image-1548″ title=”breakingnews” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/breakingnews.jpg” alt=”breakingnews” width=”162″ height=”123″ />As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here).  In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.

 A.  Post-Grant Review

Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of  § 282 (b).  Post Grant Review may be initiated ONLY within Continue Reading POST-GRANT REVIEW CHANGES TO S.515

DrudgeSirenass=”alignleft size-full wp-image-1538″ title=”DrudgeSiren” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/DrudgeSiren.gif” alt=”DrudgeSiren” width=”50″ height=”69″ />As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered Continue Reading DETAILS ON RENEWED PATENT REFORM EFFORT ARE REVEALED?

6a00d8341c51c053ef00e5508783d08834-800wiass=”alignleft size-full wp-image-1450″ title=”6a00d8341c51c053ef00e5508783d08834-800wi” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/6a00d8341c51c053ef00e5508783d08834-800wi.jpg” alt=”6a00d8341c51c053ef00e5508783d08834-800wi” width=”222″ height=”165″ />

Two weeks ago, it was widely reported that the BPAI upheld the reexamination rejection of the broadest claim of Pfizer’s US Patent 6,469,012 relating to Viagra®. Lost in the outrage over the 7 year pendency of the reexamination proceedings was the degree to which the Pharma industry stacked the deck against Pfizer, and how special dispatch seemingly ends at appeal.

The reexamination of the ‘012 patent was kicked off by the USPTO in 2003, identifying four substantial new questions of patentability (SNQs).  It is worth noting that in 2003, there was no such thing as a Central Reexamination Unit (CRU).  Instead, this patent reexamination went to the patent examining corps.  As most practitioners are aware, while the patent examining corps certainly has the technical expertise to handle such issues, special dispatch was far from assured. This deficiency, in part, led to the creation of the CRU in 2005. The CRU implemented a coordinated management of the USPTO’s reexamination caseload, and staffed reexamination proceedings with teams of three experienced primary examiners.

In addition to the initiation of the Viagra® reexamination in this period of USPTO transition, the Pharma industry implemented a strategy of Continue Reading Stacking the Deck Against Viagra

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Another week, another patent litigation stayed in a California court pending a concurrent USPTO  reexamination.  This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind. Com. De Equip. Medico (“GMReis”) over Synthes’ U.S. Patent No. 7,128,744 (“the ’744 patent”) covering locking bone plates used in surgery to secure fractured bones.  In his Order Judge Lorenz stated that “[t]o proceed with the case during [inter partes] re-examination [of the ’744 patent] would needlessly duplicate the effort of the USPTO and forgo the benefit of its expertise and analysis.”  He noted that “if the USPTO cancels the patent’s claims the issue of infringement will be moot.”  On the other hand, if “the USPTO reaffirms the patent, the court will have the benefit of the agency’s analysis of the same prior art that GMReis is relying on to challenge the patent’s validity.”  Because the dates for discovery, the Markman claim construction hearing and trial had yet to be set, the judge indicated that these factors weighed in favor of granting a stay of the litigation pending the outcome of the inter partes reexamination proceedings.  The judge was unimpressed by the undue prejudice argument raised by the patent owner, since in the three years that the litigation was pending, “Synthes had not requested a preliminary injunction.”

The Order illustrates the value of an early filed reexamination.  In this case, Smith & Nephew employed a common third party tactic of quickly filing an ex parte reexamination request at the outset of a dispute to get the reexamination going, followed up by a later filed inter partes reexamination request.  This one-two-punch of ex parte and inter partes requests allow the requestor to initiate reexamination quickly, without having to worry about the comprehensiveness of the ex parte request, prior art search, etc.  As the later filed inter partes request is subject to the “could have been raised” aspect of the 35 U.S.C. 315(c) estoppel provision, the later requests is prepared more carefully.

Smith & Nephew filed their ex parte reexamination proceeding (Control No. 90/009,377) on January 8, 2009.  On May 5, 2009 the inter partes request was filed (Control No. 95/000,465).  On July 14, 2009, the USPTO merged the proceedings.  On November 5, 2009, the USPTO issued a non-final Office Action rejecting all of the ’744 patent claims for obviousness over a number of printed publications.

USA-COURT/SOTOMAYORass=”alignleft size-full wp-image-1512″ title=”USA-COURT/SOTOMAYOR” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/rtr25o04_comp.jpg” alt=”USA-COURT/SOTOMAYOR” width=”233″ height=”182″ />Earlier this month we noted that with the health care legislation seemingly losing steam, that there appeared to be movement on patent reform; yesterday those  suspicions were confirmed.  Senator Patrick Leahy (D –Vt) indicated at an executive business meeting on Thursday that a compromise bill on patent reform would be forthcoming.  The detailed press release, along with a video of the meeting can be found here.

While details of the reported compromise are scant, it appears that USPTO Director Kappos, bar organizations, industry and several prominent senators have worked together to arrive at a new and improved S. 515.  It is expected that the details of the compromise bill will be released in the coming days.

Likewise, I will be speaking on this topic along with Philippe this coming Monday at 4th Annual Patent Law Institute NYC

updateass=”alignleft size-full wp-image-1458″ title=”update” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/update.jpg” alt=”update” width=”132″ height=”127″ />Last week we noted the potential affect of Ex Parte Tanaka internal to the USPTO.  Tanaka was decided last December by the Board of Patent Appeals and Interferences (BPAI), holding that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims.  The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. 

Not surprisingly, earlier this week the issue was taken to the Federal Circuit on behalf of Koyo Seiko Co. Ltd.   Stay tuned for further updates.

PLI-Logoass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”229″ height=”132″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York  this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI program on “Increased Utilization of Inter Partes Reexamination with Concurrent Litigation” (4th Annual Patent Law institute).   Philippe Signore will be speaking this coming Monday on the proposed patent reform legislation, and Stephen Kunin will be speaking at the Chicago events on Inter Partes Reexamination Mechanics with Todd Baker.  More information on these programs is found below, hope to see you there!

4th Annual Patent Law Institute NYC

Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)

 

 

 

–E.D. of Texas Defendants Seek to Ride Off Into the Sunset– 

The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation has proved effective in the E.D. of Texas sporadically at best; Judge Ward and Judge Davis in particular very rarely, if at all, stay an action in favor of a pending patent reexamination.  

Since In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), a motion to transfer to a more convenient venue from a Texas court has become a marginally effective defendant strategy.  Now, as a matter of course, defendants will seek transfer of a patent infringement case to a more “convenient” forum.  Of course, convenience is rarely a mere issue of geography, but rather a basis for moving the dispute to a less patent friendly forum. In the eyes of defendants, less patent friendly would describe practically any other forum. Yet, as noted in the chart below, infringement cases seeking transfer in 2008-2009[1] increasingly sought California as a destination of “convenience.” 

xfer1e litigation despite the fact that the reexamination proceedings could take five to seven years with appeals to conclude.[2]

In a post last month, we explained that plaintiff forum selection should include an analysis as to the “reexamination friendliness.”  As can be appreciated, depending upon the location and judge of a given federal district court, the odds of a case being stayed can vary quite significantly.  Indeed, even after a plaintiff has selected a seemingly desirable forum, the game is not over; the ability of a defendant to transfer from a plaintiff-friendly forum to a forum that is reexamination friendly, such as the N.D. of California, and subsequently seek a stay of the litigation can be an especially effective, Texas Two-Step.

 

[1] 64 Motions were analyzed in total.

 [2] Perhaps the Plaintiff overplayed the prejudice factor to the detriment of others, still, many district courts point to such delays as clearly prejudicial, especially when direct competitors are involved as is the case here.

deniedass=”alignleft size-thumbnail wp-image-1402″ title=”denied” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/denied-150×150.jpg” alt=”denied” width=”85″ height=”88″ />As first reported by PatentsPostGrant.com in November 2009, the patent reexaminations of NTP vs. RIM infamy were soundly shot down by the BPAI.[1]  In November of 2009, the BPAI began issuing a series of decisions affirming the rejections of the five NTP patents. 

5,436,960 BPAI reexamination opinion (link)
5,819,172 BPAI reexamination opinion (link)
6,317,592 BPAI reexamination opinion (link) 
6,067,451 BPAI reexamination opinion (link)
5,625,670 BPAI reexamination opinion (90/007,723)

As expected, in December of 2009, NTP requested the BPAI rehear arguments in these cases.  Earlier this month, the BPAI, in tersely worded responses, denied rehearing in the ’592 ‘172, and ‘960 patents.  As the issues in the ‘670 and ‘451 patent are common, namely, consideration of certain declaration and the public availability of certain prior art, it is expected that the remaining two denials will follow shortly. Next stop for NTP is the Federal Circuit. 

The Federal Circuit will be quite busy with NTP in the coming months.  In addition to the five patents noted above, NTP has two additional appeals from the BPAI headed to the court. 

5,438,611 BPAI reexamination opinion (link) 
-(CAFC appeal noticed 1/26/10)
5,479,472 BPAI reexamination opinion (link) 
-(Rehearing denied 2/5/10)

NTP patent, 5,438,611 appears to be out in front of the pack of (7) appeals, with the first formal CAFC appeal notice filed this past January. The ‘611 Patent, and NTP patent 5,479,472 were asserted against Sprint, T-Mobile, AT&T and Palm, in 2006.  As with the five patents above, the BPAI mostly affirmed the rejections applied in reexamination. 

Stay tuned.

[1] Rejection of all claims were affirmed in 6,317,592, 5,819,172, and 6,067,451; Rejections  were affirmed-in-part in 5,436,960 and 5,625,670, (the surviving ‘670 claims appear to have been added in reexamination, claim 15 of the ‘960 appears to be the only surviving claim successfully asserted against RIM)

slingass=”alignleft size-full wp-image-1179″ title=”sling” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/sling.jpg” alt=”sling” width=”217″ height=”249″ />As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis.  For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims.  However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic. 

In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed. 

For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.  Continue Reading Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?