Posts Tagged: "inter partes reexamination"

Appellant Affinity Labs of Texas, LLC (“Affinity”) appealed from the inter partes reexamination of its patent filed by Apple Inc. (“Apple”). Apple requested reexamination after Affinity asserted the patent against Apple in district court. The parties settled their dispute and filed a joint stipulation of dismissal with the district court… The estoppel provision of Pre-AIA Section 317(b), as applied to Inter Partes Reexamination, requires a “Final Decision,” which must show that the estopped party has not sustained its burden of proving invalidity of any patent claim in suit. Thus, a joint stipulation and order of dismissal “without prejudice” did not bar the maintenance of the Inter Partes Reexamination.

“The results from the Patent Trial and Appeal Board reflect the procedures it applies, and in my judgment the procedures are wildly off base,” Judge Michel explained… “We’ve had PTAB final results… whatever the intentions were we don’t have to speculate… we have ample evidence of how it worked in practice. We know it doesn’t work satisfactorily.” *** “I don’t think things are really getting much better,” Kappos said. “We are in what I refer to as the leaky life raft.” When you are stranded and a leaky life raft comes along it looks great, but it doesn’t change the fact that it is still a leaky life raft. “The best you can say about 101 is that it has stabilized in a terrible space.”

Unified Patents is a relatively new form of patent troll that works as a “Troll of Trolls” or “ToT.” They file IPRs (inter-partes reexamination requests) to kill patents. While they purport to only attack “bad patents,” their definition of a “bad patent” is simply any patent asserted against their clients. So who are their clients? Good question – that is a large part of the problem. They keep most of their clients’ identities secret. Unified does identify a handful of their members on their website such as Adobe, Google, NetApp, Roku, and Salesforce… But China is different. Here, a mercenary third party attacking innovation via patents is problematic. China, unlike America, has made innovation a top priority. China’s government has also, over the last few years, created the best patent enforcement environment in the world.

Reliance on expert declarations is not per se deficient because the declaration utilizes a legal turn-of-phrase, i.e. “It would have been obvious.” The declaration is sufficient, and reliance is not an error if the declaration incorporates factual determinations that support its legal conclusions….Strava sought Inter Partes Reexamination of several claims of a patent owned by Icon. During reexamination, the Examiner rejected all pending claims as obvious. Icon appealed the Examiner’s findings and the Board affirmed. Icon appealed to the Court and challenged the Board’s reliance on Strava’s expert declarations as improper and its decision as lacking substantial evidence.

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

I represent MCM Portfolio LLC, which is seeking Supreme Court review of a recent decision of the United States Court of Appeals for the Federal Circuit upholding the constitutionality of the inter partes review (IPR) procedures created by the America Invents Act (AIA). The petition is available here. Amicus briefs in support of the petition are being filed May 31. We argue that IPR violates Article III of the Constitution, which vests the judicial power in the federal courts, and also the Seventh Amendment, which guarantees a right to a jury in civil litigation.

Waters argued that Agilent could not appeal, because Aurora was the third-party requester of the reexamination, not Agilent. The Court held that the relevant question was whether Agilent was a member of a class of litigants that may enforce a legislatively created right under 35 U.S. C. § 141 (reexamination appeals). If so, that party has a ‘cause of action’ under the statute, and this cause of action was a necessary element of his ‘claim.’ See Davis v. Passman, 442 U.S. 228, 239 (1979). The Court held that both 35 U.S. C. § 141 and 35 U.S. C. § 315(b) confirm that the right to appeal an adverse reexamination decision is reserved only to patent owners and third-party requesters.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).