APJ’s Enforce Ex Parte Communications Prohibition

| February 1, 2013

Once again the APJs have made clear that the new AIA post-issuance matters are not informal proceedings, this time chastising counsel for breaching the Patent Office’s prohibition against ex parte contacts in inter partes-type matters.

In IPR2012-00035 & 00037, both entitled Nissan North America v. Patent of Collins and Davanloo, Petitioner Nissan sent identical emails directly to APJ Sally Gardner Lane, advising her that the Preliminary Responses filed by Patent Owners Collins and Davanloo contained mathematical errors.  These errors, Nissan said, could “materially impact” the proceeding.  Specifically, in three instances, the Patent Owners had inaccurately calculated the diameter of modules disclosed in prior applications.  According to Nissan’s email, which was not copied to the Patent Owners, this “basic and indisputable mathematical error” was “especially significant because the Patent Owner makes no arguments whatsoever other than those relating to [the] priority date of at least three of the prior art references.”  Nissan’s email concluded with the request: “[w]e would like to know the proper procedure for requesting judicial notice of this false statement.”

In an Order seven days later, the APJs did in fact take notice, expressing concern about “the manner and content of the Nissan email.”  “It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so.”  The APJs continued that “[i]t is even more troubling that Nissan did so without providing Collins with a copy of the email.”


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Category: Inter Partes Review

APJs Grant Inter Partes Review in BOS Case, Part I

| January 28, 2013

At the end of last month, we reported that the Patent Owner BOS GmbH had filed a Preliminary Response in Macauto USA v. BOS GmbH, IPR2012-00004, asking that the Patent Office decline to institute the requested inter partes review of U.S. Patent No. 6,422,291 (claiming a mechanism for car window shades).

BOS asserted that inter partes review should be denied under 35 U.S.C. § 315(b) because it had sued Macauto Taiwan, parent of Petitioner Macauto USA, more than one year before Macauto’s Petition was filed.  Section 315(b) provides:

 An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).


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Category: Inter Partes Review

APJs Define “Covered Business Method Patent”

| January 28, 2013

One of the new post-issuance proceedings created by the America Invents Act involves “covered business method” (CBM) patents.  The AIA authorizes a party to challenge the validity of such a patent, according to the procedures created by the AIA for post-grant review proceedings.  On Friday, in Liberty-Mutual v. Progressive Cas. Ins. Co., CBM2012-00002, the APJs addressed the issue of whether the challenged patent was an eligible CBM patent.

Section 18(d)(1) of the AIA defines a CBM patent as one

that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(Emphasis added).  The PTO’s implementing rules provide guidance on what the AIA means by the “technological inventions” exception.

In determining whether a patent is for a technological invention . . . , the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

(37 CFR § 42.301(b)).


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Category: Covered Business Method Patent

Gnosis Attacks Four Merck Folate Composition Patents, Week of January 21, 2013

| January 28, 2013

The Italian drug company Gnosis S.p.A. has counter-attacked Merck and its business partners last week, by requesting inter partes review of U.S. Patent Nos. 5,997,915, 6,011,040, 6,673,381 and 7,172,778 (see inter partes review Request Nos. (1)-(4)).  The patents claim various folate and L-methylfolate compositions and methods of use, for treating vascular disease and neural tube deficiencies.  Merck, South Alabama Medical Science Foundation, and Pamlab, which collectively own and license the four patents, have sued Gnosis for infringement, both in the U.S. International Trade Commission and the Eastern District of Texas.  We will watch for interactions between the PTO’s reviews and the ITC’s investigation, since the two proceedings are likely to be completed at approximately the same time.

Using a strategy that will interest practitioners, LaRose Industries has filed two separate inter partes review requests, each based on a different interpretation of the claims (see inter partes review Request No. (5)).  The two sets of claim interpretation are intended to correspond to the patent owner’s claim construction as presented in the infringement litigation, and during prosecution of the ‘558 patent. Petitioner alleges that the patent owner has offered two contradictory sets of claim construction.


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Category: Recent Requests
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