PTO Board : US PTO Litigation Alert™

Should I ask for Oral Argument in My Reexamination

Scott Daniels | December 19, 2012

Once all the briefs have been filed, the Patent Owner has the option of requesting oral argument (with inter partes reexaminations, both the Patent Owner and the Requester have that option).  So, should the Patent Owner ask for oral argument?  Rule 41.73(a) reflects at least some ambivalence on the part of the Board:

An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.

Thus, there should be some objective basis for believing that resolution of the issues on appeal would be facilitated by oral argument.  Certainly, the Patent Owner should not ask for oral argument, only to repeat the arguments in its brief.

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Micron Scores Victory over Rambus Patent at PTO Board

Scott Daniels | December 7, 2012

The comparative strength of inter partes reexamination, over ex parte reexamination, was demonstrated anew today when the Patent Trial & Appeal Board rejected claims 1and 4 of Rambus’ U.S. Patent No. 6,751,696.  (95/001,133).  The ‘696 patent is one of the famous Farmwald patents that claim synchronous memory devices and that have been the subject of a number of ITC and District Court proceedings.

The examiner had initially confirmed the claims as being valid over a proposed combination of prior art references.  Micron, one of the parties that had requested reexamination, appealed to the Board, and the Board has now found that those claims are invalid over the cited references, reversing the examiner.  Of course, in an ex parte reexamination, the requester would not have been able to appeal the examiner’s initial confirmation of the claims.

In a bit of “inside baseball” that might interest reexamination practitioners, the Board rejected Rambus’ argument that Micron had no standing to pursue the appeal was not proper.  Rambus correctly pointed out that Samsung, not Micron, had proposed the specific combination of prior art in a separate reexamination request that was merged with the reexamination requested by Micron.

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A Pointer from Reexamination Practice

Scott Daniels | November 29, 2012

Not every grievance against an examiner in reexamination can be resolved through appeal to the Board.  In fact, the Board’s appellate jurisdiction is limited to “final rejection[s] of any claim by the primary examiner … .”  35 U.S.C. § 134(b).  Stated differently, a patent owner “may appeal … with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.”  35 U.S.C. § 315(a)(1).

In Weatherford Int’l v. Tesco, 95/000,418 decided yesterday, the patent owner found that it could not contest, by appeal to the Board, the examiner’s refusal during the prosecution of the reexamination to enter a claim amendment.  The Board explained that the patent owner’s “recourse was to seek review of the Examiner’s decision via petition to the Director, not appeal to the Board.”

Nonetheless, the case ended happily for the patent owner – the Board reversed the examiner’s prior art rejection of the claims, based on the patent owner’s technical arguments and a § 131 Declaration removing one of the prior art references.  Regarding the Declaration, the Board concluded that although “the Examiner takes the view that the evidence is insufficient [to show an earlier reduction of the claimed invention to practice], it is not apparent what claim features the Examiner considers absent or unaccounted for in connection with the Schneider Declaration and evidence submitted therewith.”

Update on Reexamination of LG Philips LCD Patents

Scott Daniels | July 12, 2012

Yesterday we reported that the Patent Office Board of Appeals had affirmed a reexamination examiner’s rejection of certain claims LG Philips’ U.S. Patent No. 6,815,321, claiming a method for forming a thin film resistor for use in laptops, monitors and television sets.  The Board has now affirmed eight distinct anticipation and obviousness rejections of a related LG patent claiming then film resistors, U.S. Patent No. 7,176,489.

LG Suffers Setback at PTO Board in LCD Dispute with Chi Mei

Scott Daniels | July 11, 2012

The infringement action filed by LG Philips LCD against Chi Mei Optoelectronics and AU Optronics in Delaware is scheduled to go to trial at the beginning of November.  LG sued Chi Mei and AU in 2006 for infringement of four LCD patents, including U.S. Patent No. 6,815,321, claiming a method for forming a thin film resistor.  The resistors are used in laptops, monitors and television sets. 

In the meantime, however, a reexamination against the ‘321 has been winding its way through the Patent Office.  And this morning, the Patent Office Board of Appeals affirmed the examiner’s prior art rejections of certain ‘321 claims.  Essentially, the Board found that the various declarations filed by LG attacking the rejections failed to address the relevant disclosure of the references or lacked corroboration. 

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How does the Patent Office Get out of a Fix?

Scott Daniels | May 25, 2012

The PTO Board of Appeals found itself in a difficult situation yesterday in the inter partes reexamination of Google v. Function Media (95/001,061).  The reexamination examiner had adopted a number of prior art rejections proposed by Requester Google, and the Patentee Function Media had appealed to the Board.  Function Media’s rejected claims were the original, unamended claims.  Accordingly, those claims could be rejected only if they were anticipated or made obvious by “patents or other printed publications” – other rejections, such as rejections under § 112, were prohibited. 

The problem was that the claims recited a series of means-plus-function limitations that lacked corresponding structure in the specification.  On the one hand, the Board was forbidden by statute from rejecting the claims under § 112, ¶ 6, and on the other hand, the Board could not review the examiner’s prior art rejections because it could not construe those limitations in the manner required by § 112, ¶ 6.

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If at first you don’t succeed ….

Darrin Auito | May 18, 2012

In Re Baxter International, Inc. (Fed. Cir. 2012)

(Reexamination No. 90/007,751)


The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding.  Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity.  However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments. 


In Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431 SBA, 2007 WL 518804 (N.D. Cal. Feb. 13, 2007), the district court concluded that Fresenius failed to show by clear and convincing evidence that claims 26-31 were not valid.  The CAFC affirmed the district court’s decision, explaining that Fresenius “failed to present any evidence … that the structure corresponding to the [claimed function], or an equivalent thereof, existed in the prior art” and did not identify “the structure in the specification that corresponds to the [claimed function] or compare the identified structure to those structures present in the prior art.  Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009).  The CAFC held that the clear and convincing burden of proof “cannot be carried without clearly identifying the corresponding structure in the prior art.”

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Claims of Two Rambus Memory Device Patents Rejected by PTO Board of Appeals

Scott Daniels | April 25, 2012

The Patent Office Board of Appeals dealt Rambus a major setback yesterday by affirming the anticipation rejection of the two independent claims in reexamination of U.S. Patent Nos. 6,266,285 and 6,314,051, two of the so-called “Farmwald Patents” that have been the subject of an ITC investigation and several District Court infringement actions. The Board also reversed the decision of the examiner not to reject two other clams in each of the ‘285 and ‘051 patents, thereby entering a new grounds for rejection of those claims. The patents now go back to the reexamination examiner for consideration of these new grounds for rejection. The reexamination of each patent was based on two separate reexamination requests, one filed by Samsung, one by Micron, which were then merged by the PTO.

For both the ‘285 and ‘051 memory device patents, the Board found that all three claims in reexamination were anticipated by the Bennett patent which “discloses a single chip embodiment having the ability to delay the timing processing certain signals.” The Board relied upon a detailed reading of the Bennett reference and additionally argued that Rambus’ attempts to distinguish Bennett contradicted “other arguments made elsewhere here [sic] and in numerous related proceedings.”

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Rambus Suffers Setback in ‘109 Reexamination at the PTO Board

Scott Daniels | March 22, 2012

Rambus’ hopes for preserving its U.S. Patent No. 7,287,109 suffered a setback this morning when the PTO Board of Appeals denied its petition to modify an earlier Board decision.  In that earlier decision, the Board affirmed a rejection of certain ‘109 claims as being obvious over the “Farmwald” reference; Rambus’ petition asked that the affirmed rejection be treated as a “new ground for rejection,” allowing Rambus to resume prosecution of the ‘109 patent claims before the examiner.  After today’s denial by the Board of Rambus’ petition, Rambus’ only remedy is to pursue an appeal of the rejection at the CAFC.

Rambus had argued in its petition that the Board’s earlier decision affirming the prior art rejection relied on “new facts” not considered by the examiner.  Rambus argued, essentially, that it had not received a fair opportunity to address the new facts relied upon by the Board. 

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Google Victorious Over Function Media Internet Advertising System Patents

Scott Daniels | January 27, 2012

The PTO Board of Appeals handed Google an important victory today in its battle with Function Media over three Internet advertising patents – U.S. Patent Nos. 6,829,587, 7,240,025 and 7,249,059.  Function Media sued Google and Yahoo! in the Eastern District of Texas in 2007, asserting that these patents were infringed on by “Google’s AdSense and AdWords technologies, Google Print Ads, and other products and services related to internet and print advertising.”  Google replied to the suit in July 2008 by requesting inter partes reexamination of the patents.

This past September, after a jury trial, Magistrate Judge Everingham issued a judgment that two of the patents were not infringed and that all but four of the claims of the patents were invalid over the prior art.  The judgment is now on appeal to the CAFC.  (The third Function Media patent appears to have been dropped from the Texas case). 

And today the Board compounded Google’s success in Texas by affirming prior art rejections of all the Function Media claims in reexamination. 

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