Posts Tagged: "ex parte reexamination"

In Re: Smith International, the Federal Circuit reversed, finding that the Board’s construction of “body” was unreasonably broad. While the claims do recite “body” without further elaboration, the specification does not use the term generically… The broadest reasonable interpretation of a term in a patent claim must be consistent with the specification. An analysis looking for whether the broadest possible meaning is proscribed by the specification is a backwards approach to claim interpretations and is improper.

Crafting a proper hypothetical claim is a prerequisite to whether a theory of infringement under the doctrine of equivalents would also ensnare the prior art. The burden to present a proper hypothetical claim cannot be shifted, and a hypothetical claim cannot be broader for the alleged range of equivalents, and not otherwise narrower.

The Federal Circuit concluded that the Board’s construction of the term ‘body’ was unreasonably broad even given proper usage of the broadest reasonable interpretation claim standard… This ruling obviously makes perfect sense. Absent a comprehensive glossary that defines each and every term appearing in a patent application it would be impossible for any applicant to ever proscribe and/or preclude any and all possible broad readings for various terms that a patent examiner may come up with after the fact. Defining every term has never been required and anticipating frivolous examiner arguments has never been required, and is in fact considered inappropriate.

The respondent immediately takes issue with the argument that patents are not public rights, summarily citing MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 292, which held that that neither Article III nor the Seventh Amendment bars IPRs, a holding that, according to the respondent, does not conflict with any decision of the Court or any other court of appeals, rendering further review unwarranted.

Those now familiar with IPR proceedings will already have recognized how little resemblance current IPR proceedings have to what most supporters of the AIA envisioned upon its passage. In current practice, the role of the Director as an independent IPR gatekeeper never materialized because the USPTO’s implementing rules bypass the Director altogether, assigning the institution function to the PTAB, which in turn routinely assigns both the institution and final decisions to the same three judge panel. As a result, most of the safeguards against patent owner harassment were lost…. By failing to adopt the implementing rules needed to carry out the intent of the AIA, and by adopting other rules and procedures that are plainly skewed towards petitioners, the PTAB has intentionally tilted its IPR proceedings against patent owners. While this has been good for the PTAB, which has quadrupled in size, it was neither Congress’s intent nor that of most of AIA’s supporters to create an unfair IPR patent “killing field.”

I believe it’s not a good thing to be an inventor in the US and I hope that Trump’s “America first” will apply to inventors. Let me explain why. My name is Jean-Paul Castille, I have a degree in Engineering from “Ecole Nationale Supérieure des Arts et Métiers” (ENSAM), a major engineering school of France and I am an independent inventor. I am the president of Antor Media Corporation, a US patent licensing firm. My career has been dedicated to invention, the development and commissioning of prototype systems in different areas of the industry.

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent that was in reexamination to be patentable, despite the examiner and the Patent Trial and Appeal Board finding that the claims were obvious. While the examiner had cobbled together various references to make an obviousness rejection, the examiner failed to set forth “sufficient facts” supporting his position that the prior art disclosed the limitations of Natural’s claims in a manner that renders the claimed invention obvious.

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer applies the moment the patent expires – even if it means the Board applies a different standard than the examiner.

Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in scope to the question determined to qualify as the “substantial new question of patentability.” The “substantial new question of patentability” identified by the Director included certain prior art references. But the examiner subsequently rejected several of Pactiv’s claims due to wholly different prior art references. There was never any determination under 35 U.S.C. § 303 that these other references raised a “substantial new question of patentability,” nor did the Director issue the order required under Section 304 identifying a “substantial new question of patentability” based on these wholly different prior art references.

Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held dismissal with prejudice operates as res judicata for the same cause of action even if a subsequent reexamination amends claims.).

Not only does the Patent Office handsomely charge for the acquisition and maintenance of a patent, they also handsomely charges for the right to challenge those patents after issue. On its face this creates a perverted incentive. The arms dealer nature of how the AIA has transformed the Patent Office is not lost on many within the industry. Add in the insecurity of the USPTO budget and the fact that the Patent Trial and Appeal board (PTAB) directly reports to the Director, thereby not enjoying any true judicial autonomy (at least on paper) and you would be hard pressed to have come up with a more conflicted structure or system.

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention. Accordingly, the Federal Circuit affirmed.

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…