Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- 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
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
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PTO Statistics
Applied Materials Loses Four Appeals
| September 2, 2010
On Tuesday the PTO Board affirmed the obviousness rejections of four Applied Materials patents related to chemical-mechanical polishing of substrates.
The four appeals raised quite similar issues. The decisions are significant in that they show the difficulties faced by a patentee in reexamination attempting to overcome a prima facie case of obviousness with a showing of commercial success. As is common with such attempts, the Board found a lack of nexus between the claimed invention and the asserted success.
“Substantial New Question”: Still a Loser for Patentees?
| August 20, 2010
The PTO’s decision this June to allow patentees to challenge the examiner’s determination of a “substantial new question of patentability” (SNQ) in its appeal of a final rejection to the PTO Board – as opposed to the previous practice of requiring the patentee to make such a challenge in a petition filed within two months of the reexamination grant – was met with some fanfare in the Blogosphere. Yet, whether the challenge is by petition or appeal, the hurdle faced by the patentee remains quite high.
The difficulty of that burden was demonstrated in the Board’s decision in Ex parte Buttercup Legacy, 90/008,820 (August 19, 2010). There, the claimed invention was a “lubrication sheet for lubricating a paper shredder.” The claim included the limitation of “one or more shell layers [proving] mechanical stiffness and rigidity to the lubrication sheet.” The primary reference relied upon in the Request and by the examiner, “Zettler,” disclosed a “thin sheet” which could be made from paper, foil or magnetic tape. This disclosure was used by the Requester and the examiner to satisfy the shell layer stiffness limitation.
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PTO Board Reconsiders, Sort Of
| August 2, 2010
Requests for reconsideration at the PTO Board are usually hopeless. The Board rarely reverses itself, but it did so earlier today in Ex parte Fisch, a case involving antiestrogen treatment of men, at least with respect to certain dependent claims. Today’s decision also involved the question of what constitutes “a new ground of rejection” by the Board.
Claim 1 of U.S. Patent No. 6,391,920 recites “A method of treating disorders related to androgen deficiency in men comprising administering a selective antiestrogen to men in need of such treating.” Independent claim 4 was substantially the same, except that it defined the disorder as male menopause and did not require that the antiestrogen be “selective.”
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Judge Robinson Reluctantly Waits for CAFC Ruling on PTO’s Rejection of Claims in Reexamination
| July 28, 2010
Last week Judge James Cohn of the Southern District of Florida withdrew a permanent injunction, deferring to a PTO advisory action finding that the patent in reexamination was invalid. On Monday, Judge Sue Robinson – in Sigram v. Cisco, 2010 U.S. Dist. LEXIS 74948 (D. Del. July 26, 2010) – with great reluctance, deferred her decision on patent validity until the CAFC determines whether the PTO correctly rejected the patent claims in two reexamination proceedings.
Sigram (SSBG) had sued Cisco in Delaware for infringement of U.S. Patent Nos. 6,954,453, 7,145,902 and 7,483,431, each related to voice over internet protocols (VoIP). Cisco replied by requesting reexamination of the ‘453 and ‘902 patents. (No request was filed against the ‘431 patent). The claims were subsequently rejected and final rejections are currently on appeal at the PTO Board. Cisco has now moved for summary judgment of invalidity, citing the same combinations of prior art that it had presented in its reexamination requests.
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Mid-July Developments
| July 22, 2010
1. Board Reverses Rejection of Breed Airbag Patent
David Breed and Automotive Technologies International (ATI) won a victory yesterday at the PTO Board. In a reexamination of their U.S. Patent No. 6,712,352 for an “arrangement for controlling deployment of a side airbag,” Breed and ATI substantially amended their claims to distinguish over certain prior art. In doing so, however, they included claim wording that the examiner found to lack written description support in the ‘352 specification. Although original claims under reexamination are not checked for compliance with 35 U.S.C. § 112, amendments to original claims and new claims are, and the examiner therefore rejected the pending claims.
The Board has now reversed the examiner, finding that the ‘352 specification is “sufficiently clear that the inventors possessed the claimed subject matter as evidenced by explicit identification of the problem of side airbag deployment causing injury to a child when the child’s head is against the airbag module, and statements indicating that the described invention addresses this identified problem.”
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Practice Note on Reissue Applications
| July 14, 2010
People who follow the CAFC will undoubtedly recall the decision Pfizer v. Ranbaxy in which the CAFC found that claim 6 was invalid as an improper dependent claim under 35 U.S.C. § 112, ¶ 4 because it covered embodiments outside the scope of the claim on which it depended. 457 F.3d 1284, 1291 (Fed. Cir. 2006). The loss was especially painful for Pfizer because the patent – U.S. Patent No. 5,273,995 – claimed its extremely successful cholesterol-controlling composition, Lipitor®.
Pfizer sought to overcome its problem with claim 6 by filing a reissue application where it corrected claim 6 and added two new claims, and by later filing a second reissue application (as a continuation of Pfizer’s first reissue application) where it deleted claim 6 altogether and added one new claim. In March 2009, the PTO allowed Pfizer’s first reissue application as the ‘667 reissue patent in which claim 6 was rewritten in independent form. Pfizer’s second reissue application is still pending at the PTO.
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Reissue Applicant Loses to Recapture Rule
| June 30, 2010
Yesterday the PTO Board denied Appellant’s request for rehearing in Ex parte Hollingsworth, stating that rehearing is “limited to matters misapprehended or overlooked by the Panel” in original decision. (37 C.F.R. § 41.52(a)(1)). Appellant’s argument – that the Recapture Rule does not apply because the pending claims are patentably distinguishable over the prior art – was not “misapprehended or overlooked” for the simple reason that the argument did not appear in the original briefing. The case, however, is more than a lesson on the standard for rehearing: it recites the sequence of steps followed by the Board in determining whether the Recapture Rule applies.
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Correction
| June 30, 2010
In our Practice Note of June 28, we cited a new Federal Register notice allowing patentees to attack a finding of an SNQ by an appeal to the Board.
We should have added that such an appeal is available for ex parte reexamination, but not inter partes reexamination. See 35 U.S.C. § 312(c).
A Practice Note
| June 28, 2010
On June 16, we reported the PTO Board decision Ex parte Yasukochi et al., in which the Board refused to consider the patentee’s argument that the examiner’s rejection was improper because it was based on a combination of references that did not constitute a substantial new question of patentability (SNQ) – according to the Board, the examiner’s determination of whether an SNQ exists may be reviewed through Petition to the Director, but not by appeal to the Board.
We are now informed by our good friend and reexamination scholar – Matt Smith – that the PTO issued a Federal Register notice published this past Friday stating that the Board does have jurisdiction to consider the SNQ issue. The only caveat is that for reexamination proceedings ordered on or after June 25, 2010, the patentee must have first requested reconsideration by the examiner to preserve the issue for appeal to the Board. Review by petition is still available, but only where the examiner’s finding of an SNQ is in “brazen defiance” of the standard for such a finding.
Board Limits Claims to Specification Disclosure
| June 23, 2010
Last week, the PTO Board picked up on the theme sounded earlier this year by the CAFC in Ariad Pharm. v. Eli Lilly, 598 F.3d 1336 (Fed. Cir. 2010), and repeated in a statement by Commissioner Kappos – “an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.” Ariad 598 F.3d at 1349-50. In Ex parte Research Tech., the Board affirmed the reexamination rejection of claims of U.S. Patent No. 5,726,772 as being anticipated by a 1992 WO publication . The ‘772 patentee had asserted that it was entitled to benefit of its 1991 application, and that the WO publication was therefore not prior art.
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