Many district courts have complained that the length of inter partes reexamination proceedings is a significant deterrent to granting a stay of patent litigation. Consequently, district courts typically deny a stay request where there is a newly filed inter partes reexamination request that could result in an indefinite delay in court action prejudicial to a Patent Owner. The Northern District of California however, appears to have deviated from this approach. In Advanced Analogic Technologies, Inc. (“AATI”) v. Kinetic Technolgies, Inc. (“KTI”) (Case No. 09-CV-01360), Judge Maxine Chesney of the U.S. District Court for the Northern District of California granted an indefinite stay of a patent infringement suit pending the outcome of inter partes reexamination of AATI’s semiconductor patent-in-suit. The patent-in-suit is U.S. Patent No. 7,127,631 entitled “Single Wire Serial Interface Utilizing Count of Encoded Clock Pulses with Reset.” Both AATI and KTI make semiconductors used in computers, cameras and smart phones that employ integrated circuits with light-emitting driver circuits. Interestingly, the stay was granted despite the fact that the USPTO has not even reviewed KTI’s inter partes reexamination request . A trial date had been set for March 2011 and significant discovery had been completed. In the order staying the litigation Judge Chesney indicated that the stay would allow narrowing and clarifying claim construction via the reexamination proceedings. However, both parties agreed, that when accounting for appeals at the USPTO, the inter partes reexamination proceedings could take seven to eight years to conclude. The parties are required to file annual joint status reports on the progress of the inter partes reexamination proceedings.

On December 15, 2009 the USPTO issued a ‘Notice of Intent to Issue an Ex Parte Reexamination Certificate’ confirming the patentability of Merck’s billion dollar Singulair patent, U.S. 5,565,473.  This development effectively concludes the reexamination of the Singulair patent.  In initiating the reexamination, the USPTO issued a single nonstatutory obviousness-type double patenting reexamination rejection.  Double patenting rejections relate to the ability of a Patent Holder to obtain multiple patents on obvious variations of a single invention.  This rejection, if maintained by the Office would not have invalidated the patent, but instead, could have potentially shortened the term of the Singulair patent.  However, the rejection was withdrawn by the USPTO.

The reexamination was initiated by a third party, Article One.  Article One claimed to have uncovered Continue Reading Singulair Reexamination Advances to Favorable Conclusion

On October 30, 2009, in Ex parte Senju Metal Industry Co. the Board of Patent Appeals and Interferences (“BPAI”) affirmed a rejection of non-original patent claims in a reexamination proceeding directed to soldering flux for soldering elements. As a predicate to its decision, the BPAI explained the rationale behind application of the broadest reasonable interpretation rule in administrative proceedings within the USPTO. “This longstanding principle is based on the notion that ‘during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.’ That is, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. ‘Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.’ ‘[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.'”. During the reexamination proceeding the patent examiner determined that the claim term “volatile organic solvent conventionally used in a soldering flux” failed to meet the definiteness requirement of 35 U.S.C. §112, 2nd paragraph because the description of the invention did not recite this language, “let alone any disclosure that would enlighten one skilled in the relevant art as to what solvents are covered by the [term].” The appellants in an effort to overcome the rejection filed a declaration averring that a person skilled in the relevant art would understand “volatile” to mean “evaporating or passing off readily in the form of a vapor and that solvents in the [patent at issue] fall under this definition.” Appellants argued that “[o]ne skilled in the art of preparing soldering fluxes would understand what solvents are conventionally used in soldering flux.” Agreeing with the patent examiner, the BPAI observed that the limitation “volatile organic solvent” cannot be found in the patent specification. Also the appellants used the term in a “manner contrary to the ordinary meaning of the term” urging that ethylene glycol, which has a boiling point of 197°C, is covered by the claim. The BPAI then held that the “use of terms contrary to their ordinary meanings, in and of itself, does not render a claim indefinite, for [p]atentees are free to act as their own lexicographers … one skilled in the relevant art would not be able to ascertain whether an organic solvent with a boiling point of, e.g., 200°C would be covered by the disputed claim terms.” The BPAI determined that the specification “does not reasonably apprise the full scope of what Patentees mean by ‘volatile organic solvent conventionally used in a soldering flux.'” Compare this decision with the our November 18, 2009 posting Attacking a Patent in Reexamination for Lack of Written Description and Enablement?

The face of patent litigation in the U.S. has evolved greatly in the last 5 years with respect to patent reexamination. For patent litigators, throughout the U.S. and especially the Northern District of Illinois, the emergence of this now seemingly reliable strategic option is an important case management consideration. Indeed, if not adequately considered in the course of litigation counseling, reexamination ignorance may create malpractice opportunities for unsuccessful defendants.

For a more detailed discussion of these issues, see my guest post on ChicagoIpLitigation.com

If a patent owner has disclosed, but not claimed some embodiments of the invention, resort to the doctrine of equivalence to protect such unclaimed embodiments may be lost through the doctrine of prosecution history estoppel. Let’s assume, for sake of argument, that the patent application that led to the patent contained no claims to the genus covering the species set forth as separate embodiments of the invention and the prosecution history of the patent contained no arguments applicable to the unclaimed embodiments. Consequently, if the patent is less than two years old, the patent owner may seek to correct this error in claiming less than she was entitled to claim through the filing of a broadened reissue application claiming the previously unclaimed embodiments of the invention. The doctrine of impermissible recapture in such circumstances would not apply. In accordance with MPEP § 1412.01: Claims presented in a reissue application are considered to satisfy the requirement of 35 U.S.C. 251 that the claims be “for the invention disclosed in the original patent” where: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112 first paragraph is satisfied; and (B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application. The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention. **** **>One should understand<, however, >that< the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue. Filing a reissue application to claim previously unclaimed embodiments of the invention must be filed within two years of the issuance of the original patent, if claims to the previously unclaimed embodiments would read on something which the original claims do not. This would presume that no claims to the genus covering all the embodiments of the invention existed in the original patent. The test for a broadening reissue is whether the reissue patent claims would be infringed without infringing the original patent claims. This gambit will avoid the loss of potentially valuable patent rights where the patent owner did not file a voluntary divisional application to seek protection for the previously unclaimed embodiments of the invention before issuance of the original patent.

Part 1 of this series focused on the importance of a good prior art search prior to filing a request for inter partes reexamination.  Part 2 examines the exceptions to the estoppel provisions of § 315(c).  Specifically, this blog entry identifies situations in which a party might still be able to contest in litigation the validity of a patent that was the target of an unsuccessful request for inter partes reexamination. Continue Reading Is The Estoppel Effect of Inter Partes Reexamination a Valid Deterrent to Filing? (PART 2 OF 2)

The estoppel consequences of inter partes reexamination are set forth in 35 U.S.C. §§ 315(c) and 317(b) as well as the uncodified provision of § 4607 of P.L. 106-113.  This blog entry will focus on § 315(c).  A third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).  A few basic considerations can help an accused infringer minimize, if not eliminate, the negative effects of estoppel and still reap the benefits of inter partes reexamination. Continue Reading IS THE ESTOPPEL EFFECT OF INTER PARTES REEXAMINATION A VALID DETERRENT TO FILING? (PART 1 OF 2)

Any requested reexamination filed while an earlier filed reexamination is pending must raise an SNQ different than that raised in the pending reexamination. Each request for reexamination must raise its own SNQ, as compared to the pending reexamination proceeding for the same patent. Previously, one could use the same SNQ as in the pending reexamination. A TPR was able to provide continued input during the reexamination proceeding by filing multiple ex parte reexamination requests and having them merged, thus resulting in an essentially inter partes reexamination, without the statutory estoppels. Patent owners or TPR, depending on who was losing in the pending reexamination proceedings, could delay the proceedings indefinitely. Extensions of time in reexamination proceedings are difficult to get granted. They must include a statement of what action the patent owner has taken to provide a response as of the date the request for the extension of time. The Patent Owner must provide a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the Office action within the time period for filing a response. A statement of why, in spite of the actions taken so far, the requested additional time is needed. If a second request for reexamination is filed after an action closing prosecution in an inter partes reexamination the proceedings will generally not be merged. Merger would run contrary to the statutory “special dispatch” requirement of 35 USC 314. If prior art is cited to the USPTO after an action closing prosecution the patent owner must submit a 37 CFR 1.182 petition, including a factual accounting providing a sufficient explanation of why the information could not have been submitted earlier and an explanation of the relevance of the information submitted with respect to the claimed invention.

On March 7, 1912, the Commissioner of Patents decided in Ex parte Bayles, 176 O.G. 749 that “[u]ntil a[n] [reissue] application is ended in all its divisions the vitality of the original patent continues so far as required to support that portion of the [reissue] application which remains undecided.” This would be true even if the parent reissue patent were to issue during the pendency of the divisional application. On August 31, 1911, the petitioner in Bayles filed a reissue application containing both method and apparatus claims found in the original patent. Subsequently, by amendment, the petitioner canceled the method claims for the purpose of filing a divisional reissue application. The divisional reissue application claiming the method was filed prior to issuance of the parent reissue application claiming the apparatus. The Commissioner relied on the August 31, 1880 decision of the Acting Attorney-General in the case of ex parte Greaves (C.D., 1880, 213; 18 O.G., 623; 16 Op. Atty. Gen., 560) holding that the good sense of the maxim pendente lite nihil innovator applied. The purported surrender of the original patent when the parent reissue patent issued after the filing of the divisional reissue application did not prevent a division of the reissue from issuing. In MPEP § 1451 (II) states that “[t]he decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple reissue patents to issue even where the multiple reissue patents are not for “distinct and separate parts of the thing patented.” This section further cautions that “[a]s is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. …Where the parent reissue application issues **>before< the examination of the continuation >reissue application<, the claims of the continuation >reissue application< should be carefully reviewed for double patenting over the claims of the parent >reissue application<. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 – § 804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate an obviousness-type double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.” However, the MPEP is silent as to the effect of the language of 35 U.S.C. § 252 which indicates that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.” Do the principles announced in ex parte Bayles apply? Namely, because a continuation reissue was filed prior to issuance of the parent reissue patent does surrender of the original patent not take place until issuance of the last continuation reissue patent? Suppose that the original patent claimed an invention AB. Within two years of the grant of the original patent a broadened reissue application was filed claiming the invention as AB, AbrBsp and AspBsp. During examination applicant facing a rejection of claims to AB, and AbrBsp, chooses to file a continuation reissue as to these claims, while thereafter letting the parent reissue application claiming only AspBsp issue. Putting aside the obviousness-type double patenting issue that can be obviated by filing a terminal disclaimer in the continuation reissue application, what effect, if any, does section 252 have on the examination of claims AB in the continuation reissue application. Are claims to AB surrendered by operation of section 252 or do the Bayles principles apply to avoid the surrender of original patent claims to AB? We are unaware of any Federal Circuit precedent directly on point. We leave it to you to decide.

Unlike in ex parte reexamination, a third party requester may participate at every stage of the proceedings. A third party requester (TPR) may once file written comments on any response by the patent owner to an Office action. 35 USC 314(b)(3). All proposed grounds of rejection raised by the TPR, and all TPR comments must be specifically addressed by the examiner. The TPR may appeal any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability to the Board of Patent Appeals and Interferences (BPAI) under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(1). The TPR may be a party to nay patent owner appeal of a rejection to the BPAI under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(2). A TPR cannot file an inter partes reexamination request: (1) while a first inter partes reexamination is ongoing -35 USC 317(a); (2) where a final decision has been entered against the TPR in a civil action, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); (3) where a final decision has been entered against the TPR in an inter partes reexamination that is favorable to the patent owner, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); and (4) for a any patent that issued from an original application filed in the U.S. before November 29, 1999-Section 4608 of P.L. 106-113. Estoppel attaches against any TPR in a later civil action if the TPR loses: as to reasserting grounds of invalidity against challenged patent claims-35 USC 315(c) or as to challenging facts established in the reexamination proceedings-Section 4607 of P.L. 106-113. Continue Reading An Inter Partes Reexamination Primer (Part 1 of 2)