PTO Board : US PTO Litigation Alert™

Microsoft & Nintendo Win at PTO Board

Scott Daniels | September 14, 2011

The PTO Board of Appeals handed Microsoft and Nintendo a victory this morning in the inter partes reexamination of U.S. Patent No. 6,344,791, affirming the examiner’s prior art rejection. The ‘791 patent claims a sensor for videogames. The owner of the ‘791 patent, Anascape, had sued the two companies in the Eastern District of Texas for infringement of the patent.

NuVasive Scores Major Comeback at PTO Board against Medtronic/Warsaw Orthopedic Patents

Scott Daniels | August 8, 2011

The cervical fixation device manufacturer NuVasive won a major victory Friday in its on-going patent war with Medtronic and Warsaw Orthopedic.  Warsaw, that owns U.S. Patent Nos. 6,428,542 and 6,936,050, and Medtronic, Warsaw’s exclusive licensee, sued NuVasive in 2008 in the Southern District of California for selling cervical plate devices that infringed the ‘542 and ‘050 patents, as well as 11 other related patents.  NuVasive replied by requesting inter partes reexamination of the ‘542 and ‘050 patents, and that portion of Warsaw’s infringement action was stayed pending completion of the reexaminations.

The PTO ordered reexamination, but the examiner ultimately refused to adopt a series of NuVasive’s proposed prior art rejections.  Friday, however, the PTO Board of Appeals reversed the examiner, finding that most of the ‘542 and ‘050 were obvious over the prior art.  Essentially, the Board determined that the examiner had construed both the claims and the prior art disclosures too narrowly.  Using the “predictable use of prior art elements according to their established functions” passage from KSR, the Board concluded that the claims were obvious.  The Board’s entry of rejections is considered a “new grounds of rejection” under Rule 41.77(a), and Warsaw may now reopen prosecution or request rehearing.

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Tesco Benefits from Choosing Inter Partes Reexamination

Scott Daniels | May 10, 2011

We have previously noted (here) that companies requesting reexamination still prefer ex parte reexamination over inter partes reexamination.  For those patents where reexamination was requested last week, and where ex parte reexamination was an option because of the patent’s priority date, a clear majority of requesters chose ex parte reexamination.  Whether this is because of the lower fee, or because of the possibility of withholding the company’s identity, we do not know. 

The PTO Board’s decision yesterday in Tesco v. Weatherford/Lamb, however, demonstrated anew that the right of a requester to participate in inter partes reexamination, including the right to appeal to the Board, can be enormous.  There, Requester Tesco appealed the examiner’s decision not to adopt two rejections proposed in the Request, and the Patentee Weatherford/Lamb appealed three final rejections maintained by the examiner.

The significance of the Board’s decision was not in its technical and legal analysis of the rejections, but in the final score: the Board reversed each of the three rejections maintained by the examiner, but reversed the examiner’s decision not to adopt the two rejections proposed by Tesco in its Request.  These two rejections are now entered as “new grounds for rejection,” and the matter returns to the examiner for further consideration.  Without Tesco’s participation in the appeal, the validity of the patent might now stand affirmed.

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Three Tidbits

Scott Daniels | May 5, 2011

1.     PTO Affirms Reexamination of Katz ‘120 Patent

Earlier this week the PTO Board of Appeals affirmed the rejection of the claims in reexamination of U.S. Patent No. 5,974,120 assigned to Ronald Katz Technology Licensing.  Essentially, the Board agreed with the examiner that the ‘120 claims in reexamination – that claimed a telephone processing system for receiving call from terminals in different call modes (e.g., “800” or an area code) – was obvious over certain combinations of prior art references, despite Katz’ technical arguments and assertions of commercial success.

A point that might interest some is that the ‘120 patent, which expired July 7, 2009, is only now being held invalid.  Clearly, there is no fault to be found with the patentee, the reexamination requesters, or PTO.  Yet one wonders about a patent system in which an invalid patent (assuming that the Board is correct) remains in force so long, here since October 1999. 

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Chimei Innolux Wins Appeal over Mondis at PTO Board

Scott Daniels | March 21, 2011

The PTO Board of Appeals handed Chimei Innolux an important victory today (here)  in its inter partes reexamination of Mondis’ U.S. Patent No. 6,306,236.  The examiner had previously withdrawn a prior art rejection of the ‘236 claims, but the Board disagreed, restoring the rejection of the claims and adding a new prior art rejection that had been proposed in Chimei’s original request.  Mondis’ options, now, are to request that the Board reconsider its decision or to reopen prosecution.

The ‘236 patent, that claims a system for adjusting a picture on a display apparatus sent from an external computer, is one of ten patents that are the subject of an infringement case filed by Mondis in Texas against Chimei, Hon Hai, Fujinan and Top Victory.  One interesting aspect of the Board’s decision is its finding that the preamble of the ‘236 claims limits their scope; the court in Texas had reached the same conclusion in its claim construction ruling in January.

CAFC Urges Deference to PTO Reexamination Determinations

Scott Daniels | March 17, 2011

Over the last two years, there is has been a growing trend among some District Courts to defer to decisions that the PTO makes on patent validity in its reexamination proceedings.  This deference to the PTO is shown not only in cases where the court stays infringement litigation pending completion of a reexamination, but also where the court resorts to the PTO’s reexamination findings to resolve non-validity issues, for instance, willfulness, claim construction, materiality in an inequitable conduct defense, a patentee’s likelihood of success for a preliminary injunction motion, etc.  This trend received a further nudge forward yesterday when the CAFC reversed an award of attorney’s fees against the patentee in Old Reliable v. Cornell, citing inter alia the PTO’s notice of intent to confirm the validity of the patent claims.
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Three Updates: Callaway v. Acushnet, Intellectual Ventures v. Xilinx, Zimmer Spine v. NuVasive

Scott Daniels | March 10, 2011

1.  Callaway v. Acushnet

Last May we reported the possibility of a conflict between the PTO and the District Court in the golf ball patent dispute, Callaway v. Acushnet, 1:06-cv-0091-SLR (D. Del).  A jury had determined that Callaway’s four patents – U.S. Patent Nos. 6,210,293, 6,503,156, 6,506,130, 6,595,873 – were invalid over the prior art.  The accused products were Acushnet’s Titleist Pro VI® golf balls.  In the meantime, the PTO was conducting reexamination of each of the Callaway patents, and, conceivably could have reached a contrary conclusion rearding those patents. 

Yesterday, however, the PTO Board reached the same conclusion as the Delaware jury when it affirmed the prior art rejection of the claims of the ‘293, ‘156 and ‘873 patents.  Notable for reexamination practitioners, was the Board’s skepticism of Callaway’s commercial success argument that featured $1.5 billion in sales.  As has happened in many appeals, the Board found a lack of nexus between the claimed invention and the asserted commercial success.  Callaway had withdrawn the appeal of the ‘130 rejection. 

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Patent Owner Requesting Reexamination may not Appeal to the Board the Examiner’s Grant of Reexamination

Scott Daniels | February 23, 2011

The PTO Board’s second decision yesterday in Ex Parte Yasukochi – involving a patentee-requested reexamination of U.S. Patent No. 7,034,083 for an adhesive for a transdermal patch – instructs practitioners on how to challenge an examiner’s decision that a substantial new question of patentability (SNQ) is presented.  

Last June, the Board issued its first decision in the Ex parte Yasukochi, concluding, inter alia, that may a patentee may challenge an examiner’s determination that a substantial new question of patentability has been presented, and the consequent grant of reexamination, by petition to the Commissioner, but not by appeal to the Board.  Shortly after the first Yasukochi decision, the PTO Director issued a notice (75 Fed. Reg. 36,357 (June 25, 2010)) delegating authority to the Chief Administrative Law Judge “to review issues related to the examiner’s determination that a reference raises [an] SNQ.”  The Board subsequently withdrew its first Yasukochi decision and ordered new briefing on whether the Director’s Order affected that decision.

The Board’s second Yasukochi decision yesterday reached essentially the same conclusion as its first: the Director’s notice provides for a challenge to an examiner’s determination of an SNQ.  Here, the patentee challenges a particular rejection, not the original determination of an SNQ.  The Board explained that “the Notice does not delegate authority to the Board to decide whether a particular initiated reexamination is outside the scope permitted in an ex parte reexamination.”  It is only the threshold determination of an SNQ that the Director’s Notice permits to be appealed to the Board. 
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DexCom Wins Major Reexamination Victories over Abbott

Scott Daniels | January 31, 2011

DexCom’s strategy for dealing with its litigation against Abbott Diabetes Care Inc. through reexamination has taken a major step forward – in separate opinions (here & here) the PTO Board of Appeals affirmed the final rejection of two Abbott patents, U.S. Patent Nos. 6,175,752 and 6,565,509 claiming an assembly for attachment to the skin of a patient and for sensing and reporting levels of specific substances in the patient, such as glucose levels. 

In 2005, Abbott sued DexCom for infringing the ‘752 and ‘509 patents and two other patents, U.S. Patent Nos. 6,284,478 and 6,329,161, claiming subcutaneous glucose electrodes.   Abbott subsequently sued DexCom for infringing three additional patents, U.S. Patent Nos. 5,899,855, 6,134,461 and 6,990,366 for related microprocessor video and electrochemical analyte monitoring equipment. DexCom replied by filing reexamination requests against each of Abbott’s seven patents, and each request was granted.  The trial judge merged the two infringement cases and then stayed the litigation pending completion of all the reexaminations.
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Two Items of Interest

Scott Daniels | January 5, 2011

1.      Smucker Case at the Board

Subscribers may be interested in our report on the surprising outcome at the Board in the Smucker case, which was posted on IPWatchdog this Monday.

 2.      New Comments on Reexamination Stays

Judge Neil V. Wake made some interesting observations on the factors of “simplification of issues” and “prejudice to the patentee” in his recent decision to stay in Caron v. QuicKutz, Inc., 2010 U.S. Dist. LEXIS 137786

He had initially denied a motion by the accused infringer to stay the case pending completion of the reexamination of the patent-in-suit, in part, because the PTO proceeding had just begun.  Since then, however, the PTO has issued a non-final rejection of all the claims.  Judge Wake stated that “the Court presumes that an all-inclusive non-final rejection suggests that the PTO will finally reject at least some claims. Such [a] rejection would simplify the issues in this litigation.”

Regarding the “prejudice” factor, Judge Wake took a little poke at the PTO, commenting that “the PTO’s pledge to reexamine the Caron patent with ‘special dispatch’ is boilerplate drawn from a statutory requirement,” but he then found that “it appears that the PTO has moved more quickly than usual on this reexamination,” undermining “Plaintiffs’ previous estimates of the damage that may accrue during a stay period….”  The Judge also ordered the parties to report the actual progress of the reexamination.

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