Public Notice Function of Interview Summary Attacked by Nokia
In ex parte patent reexamination, the Patentee may “interview” the examiners in charge of the reexamination in an effort to advance the prosecution of the case. In most cases, the interview is scheduled to last one hour, during which time the Patent Holder may present amendments, explain their invention, attempt to distinguish their claims over the art of record, etc. At the close of the interview both the examiners and Patentee prepare and file a summary of the discussion for the public record. As discussed previously, the failure to provide an interview summary can have serious consequences for Patentees.
Of course, an interview summary is not a transcript as is the norm for oral hearings in litigation settings. Instead, it is a high level overview of the discussion between the Patentee and the examiners. Yet, as long as the summary is accurate and competently prepared by both sides, the public is well served by this practice.
Still, as many patent reexaminations are now conducted in parallel to litigation, not surprisingly, the lack of an interview transcript is often played up in court by third parties. It is not uncommon for patent reexamination counsel to be subpoenaed and questioned on the interview discussion, motions filed to require the interview be recorded, or even a rare subpoena issued to a USPTO examiner.
Most recently, in Apple’s battle with Nokia, the adequacy of the USPTO interview record was called into question. At issue in the dispute with Nokia are Apple Patents 5,315,703 and 5,455,854. Anonymous request were filed against both patents in April of 2010 (presumably by Nokia). By April 2011 both patents exited reexamination with all claims confirmed. Of course, the USPTO explained exactly why the patents were confirmed, and exactly how the prior art is deficient. Nevertheless, a strange and seemingly wasteful battle over interview summary practice rages on.
Apple motioned to quash the subpeona of their reexamination counsel, explaining (motion here):
. . .Examiners must ensure that the patent owner’s statements of substance of the interview are accurate, M.P.E.P. § 713.04, and the Examiners have not objected to or corrected the content of Apple’s statements of substance of the interviews in any of the reexaminations. In addition to the interview summary, the file wrappers in the Reexamination also contain the detailed slide presentations. . .that were used during the interviews. And most significantly, each interview was followed by Apple’s written Responses to the Office actions, and it was these submissions to the Office that constitute Apple’s official, formal response to the rejections raised by the Office in these reexaminations. 37 C.F.R. § 1.560(b) (“An interview does not remove the necessity for response to Office actions as specified in § 1.111.”).
Nokia responded (motion here):
The details of the events of the interviews are discoverable from the people who attended the interviews. The witnesses cite the reexamination interview summaries as potential alternative sources of information, yet the summaries, as the name implies, are merely summaries. They do not include everything that was said or what transpired at the interviews. For example, the entire interview summary for US Patent 5,315,703 is shown below.
“Patent Owner’s representative provided an overview of the invention and discussed differences between the Cohen reference and the instant invention. Particularly, Patent Owner’s representative argued Cohen failed to teach a notification receiver object (e.g. “receiving the notification by the at least one of the plurality of objects”) and a connection object. Examiner agreed to consider Cohen in light of Patent Owner’s arguments.”
Such a terse and overly simplified summary is hardly sufficient to explain what the witnesses said to the Patent Examiner and how the witnesses specifically characterized the scope of the patent in order to overcome the prior art. Certainly, Nokia is entitled to ask the Witnesses to provide Nokia with the same “overview” of the invention and the differences between the Cohen reference and the invention. The only mechanism to ensure that Nokia can obtain the best description of what was said is to depose all the individuals present. (emphasis added)
Although Nokia did not mention any attempt to subpeona the examiners present, such is especially difficult. (assuming the examiners would even remember anything from 50 or so interviews ago) MPEP 1701.01 is instructive in this regard:
A request by a third party to take deposition testimony of a patent examiner in a pending ex parte reexamination proceeding will generally be denied in view of the ex parte nature of the reexamination proceeding. . .
If an employee is authorized to testify, the employee will be limited to testifying about facts within the employee’s personal knowledge. . . . ShafferTool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be limited to matters of fact and must not go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or conclusions of the examiner in acting upon a patent application). . .
In view of the discussion above, if an employee is authorized to testify in connection with the employee’s involvement or assistance in a quasi-judicial proceeding which took place before the USPTO, the employee will not be permitted to give testimony in response to questions that the Office determines are impermissible. Impermissible questions include, but are not limited to, questions directed to discovering the mental processes or expertise of a quasi-judicial official, such as:
. . . .(5) Consultation with another Office employee;
(6) Understanding of:
(a) A patented invention, an invention sought to be patented, or patent application, patent, reexamination or interference file;
(b) Prior art;. . . .
(7) Reliance on particular facts or arguments;
(B) To inquire into the manner in and extent to which the employee considered or studied material in performing a quasi-judicial function; or
(C) To inquire into the bases, reasons, mental processes, analyses, or conclusions of that Office employee in performing the quasi-judicial function.
The prosecution history in these cases, like most reexamination records, are quite clear and easy to follow as to the reasons for termination. Nokia’s true gripe seems to be that the written record is not as helpful to their case they had hoped, but that does not make it incomplete from a public notice standpoint….it just means the prior art wasn’t as good as originally thought.