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- Facebook Loses Reexaminations of Pragmatus’ Patents
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- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
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- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
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- Did Google Request Reexamination of Lodsys Patents?
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Secondary Considerations a Tough Sell in Reexamination
| December 13, 2010
Traversing an obviousness rejection by arguing “secondary considerations” – such as the commercial success of the claimed invention – has always been difficult for patentees in reexamination, especially with the requirement of a nexus between the secondary considerations and the claimed invention. Just how difficult that argument can be was demonstrated today in the PTO Board’s analysis of the reexamination examiner’s obviousness rejection in Ex parte Smiths Interconnect Components, Inc.
The claimed invention was a “temperature variable microwave attenuator,” featuring resistors with different temperature coefficients. The examiner rejected the claims as being obvious over a series of prior art combinations. The patentee challenged the rejection with a variety of arguments, most notably an assertion that the claimed invention was nonobvious because it had enjoyed a remarkable commercial success: two declarations showed that 10,000,000 of the claimed attenuators had been sold since 1994 at strong profit margins; that the patentee once possessed 100% of the world market for commercial surface mountable temperature variable attenuators; that the patentee still retains substantial portions of that market; and that only the patentee’s attenuators have been certified for US and NATO military and space applications.
The patentee coupled these facts with citations to Federal Circuit precedent in which proof of commercial success of an embodiment of the claimed invention was held to constitute a prima facie case of nexus between success in the market and the claimed invention.
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Alza Overcomes Obviousness Rejection at Board for its Patented Method for Treating Depression
| December 8, 2010
Earlier today, the PTO Board reversed the examiner’s obviousness rejection of the sole claim of Alza’s U.S. Patent No. 6,440,457. The reversal demonstrates the skillful use of declaration evidence to overcome a prima facie case of obviousness.
The ‘457 patent claims a method of orally administering the anti-depressant drug venlafaxine (Effexor®) in the form of “a sustained-release dosage” or “a controlled-release dosage.” Administration occurs “over an extended period of time in a therapeutically responsive dose to produce [an] antidepressant therapy.”
The reexamination examiner rejected the claim as being obvious over a combination of references. First, he relied on certain primary references for the disclosure venlafaxine for use in treating depression. The examiner acknowledged that these references failed to disclose administration of the drug in “a sustained-release dosage form” or “a controlled-release dosage form.” To fill this gap, the examiner cited certain secondary references that disclosed the advantage of controlled drug release and showed that those skilled in the art were familiar with the specifics of controlled and sustained release delivery systems. The examiner concluded that the references would make the ‘457 claimed invention obvious.
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Examiner Applies Recapture Rule too Broadly
| November 9, 2010
The PTO Board ruled last week that the examiner in Ex parte James had misapplied the Recapture Rule when he rejected amended reissue claims under 35 U.S.C. § 251 for improper recapture.
The Recapture Rule prohibits a patentee from recapturing through a reissue application subject matter that it had surrendered by amendment or by argument during the prosecution of the original application to overcome prior art. It is based on the right of the public to rely upon such amendments or arguments as a permanent surrender of that subject matter. The question of whether “surrender” has occurred is considered from the perspective of “an ordinary observer viewing the prosecution history.”
The patent for which reissue was sought claimed a method for cutting and sealing two layers. During the original prosecution, applicants distinguished their claimed method from the prior art because of the location of a heater in an air space between V-belts.
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Precision BioSciences Wins Victory over Cellectis
| November 1, 2010
The PTO has issued a Right of Appeal Notice (RAN) in the inter partes reexamination of Cellectis’ U.S. Patent No. 7,309,605 entitled “Nucleotide Sequence Encoding the Enzyme I-SceI and the Uses Thereof.” The ‘605 patent now joins three other related Celectis patents – U.S. Patent Nos. 6,610,545, 6,833,252 and 7,214,536 – that have been rejected in reexamination and are now on appeal before the PTO Board. The reexamination proceedings were requested by Precision BioSciences.
Cellectis had filed a Complaint against Precision in the Eastern District of North Carolina in March 2008 for infringement of the ‘605 and ‘545 patents. Precision’s accused product is called a “Directed Nuclease Editor” (DNE). According to Cellectis, Precision’s DNE makes Group I intron coded endonucleases used to target site-specific DNA breaks and modify the genome of plants. The ‘605 and ‘545 patents are owned by Institut Pasteur and Universitie Pierre et Marie Currie; Cellectis is the exclusive licensee.
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Examiner Misapplies Statutory Prohibition against Enlarging Claim Scope in Reexamination
| October 28, 2010
Qualcomm won an important victory yesterday when the PTO Board of Appeals reversed the reexamination examiner’s rejection of most of the claims of U.S. Patent No. 5,778,338 – see Ex parte Qualcomm. The ‘338 patent claims an apparatus and method for compressing speech for transmission. Qualcomm sued both Nokia and Broadcom for infringement of the ‘338 patent and later settled.
What interests us in the case, however, is the Board’s treatment of the examiner’s rejection of claims 9 and 10 for enlarging the scope of the claims, in violation of 35 U.S.C. § 305.
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Requester Appeals PTO’s Refusal to Adopt Rejections, and Wins (Corrected Version)
| October 22, 2010
Much is made of the fact that the PTO grants the overwhelming majority of requests for reexamination and then adopts at least some of the rejections proposed in the request. So what do you do if the PTO does not adopt your rejections? In May 2009 NuVasive requested inter partes reexamination of Warsaw Orthopedic’s U.S. Patent No. 6,969,390 for a medical appliance, proposing ten distinct prior art rejections. When the examiner granted the request, but refused to adopt the proposed rejections, NuVasive appealed. Yesterday the Board reversed the refusal and remanded the case to the examiner, with instructions to adopt NuVasive’s first proposed rejection of claim 1 and to reconsider four other proposed rejections of certain dependent claims.
The ‘390 patent claims a “plating system” for application to the human spine, including a cervical plate and a bone screw. The primary reference relied upon by NuVasive discloses each of the claim limitations, except for certain structural features of the screw. A secondary reference, however, discloses a plating system with a screw having those structural features. In denying the request for reexamination, the examiner concluded that there would be no reason for one skilled in the art to replace the screw of the primary reference with the screw of the secondary reference.
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PTO Board Reverses Rejection of Artemis Medical Claims
| October 18, 2010
The PTO’s Central Reexamination Unit (CRU) has been criticized recently for construing claims too broadly, according to the “broadest reasonable construction” standard. Justice was done, however, in the Board’s decision Friday, Ex parte Artemis Medical, reversing the examiner’s rejection of the claims of U.S. Patent No. 6,730,042.
The ‘042 patent claimed a “target tissue localization device” for marking a biopsy cavity. The claims included the limitation of a bioresorbable body “comprising polylactic acid and polyglycolic acid.”
The examiner construed the claim as covering not only embodiments in which the bioresorbable body has both polylactic acid and polyglycolic acid, but also embodiments in which bioresorbable body has only polylactic acid and embodiments in which it has only polyglycolic acid. The examiner justified this broad construction on correspondingly broad disclosure in the ‘042 specification that the bioresorbable body could be “one or more” members of a list of materials. The examiner then rejected the claims as being obvious over a prior art reference, as well as being obvious over a combination of prior art references.
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Examiner’s “Hypothetical” Does not Create a Written Description Problem
| September 17, 2010
An inter partes reexamination, pending since November 2004, came to a favorable conclusion for the patentee today, with the PTO Board reversing the examiner on a written description issue. Essentially the Board found in Light & Motion Industries, Inc. v. Sartek, LLC (95/000,060) that two claim limitations had written description support in a provisional application, thereby removing the examiner’s primary prior art reference.
The claimed invention was a portable high intensity lighting system for underwater use by divers. The claims included the limitation that a “ballast container [be] potted with a material to eliminate vacant spaces therein so that said potting material is in direct contact with the interior of said ballast container” (emphasis added). The examiner acknowledged the disclosure in the provisional application that the ballast container “has been filled with a material to eliminate vacant spaces within.” But he then imagined a container lined with an insulator and then filled with potting material, so that the potting material would not be in direct contact with the interior of the container.
The Board disagreed, dismissing the examiner’s insulator-lined container as a “hypothetical scenario.”
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Reissue Patent Invalid for Violating Recapture Rule
| September 9, 2010
The “Recapture Rule” generally arises where an applicant makes a narrowing amendment to overcome a rejection in the original prosecution, and later attempts to “recapture” the abandoned subject matter through a reissue application. In AIA Engineering Limited v. Magotteaux International S/A, decided last Friday, it was the applicant’s argument traversing a rejection in the original prosecution that triggered the Recapture Rule, invalidating the patent.
The original patent claimed a wear component of an apparatus used to grind surfaces. Claim 1 recited a “porous ceramic pad consisting of a homogeneous ceramic composite solid solution” alumina and zirconia (emphasis added). During the prosecution of the original patent, applicant repeatedly referred to the “solid solution” limitation to distinguish the claimed invention from the prior art, e.g., “the invention is based on the observation that the ceramic pad must be a homogeneous solid solution on Al2O3/ZrO2” (emphasis added). The examiner allowed the application on the basis of that distinction.
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Microchip Wins Second Reexamination Victory at Board
| September 2, 2010
Microchip Technology won today its second victory at the PTO Board of Appeals in less than a month.
Microchip’s U.S. Patent No. 6,483,183 claimed an integrated circuit package with an IC chip including a microcontroller having an n-bit data bus and up to n pins electrically coupled to the microcontroller. The examiner had determined that the claimed IC package was obvious over the prior art. Significantly, the examiner found that the “microcomputer” disclosed in the primary reference corresponded to the “microcontroller” recited in the pending claims.
The Board has now reversed the examiner, holding that one skilled in the art would construe “microcontroller” as having all the functions of a complete computer, essentially, a computer-on-a-chip that includes a central processing unit, a memory, and input/output interfaces.
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