Posts Tagged: "inter partes reexamination"

The United States Patent and Trademark Office (USPTO) is seeking public comment on a proposal to streamline the procedures governing ex parte and inter partes patent reexamination proceedings. The timing of this announcement, which appeared in the Federal Register on April 25, 2011, seems curious to me. With patent reform circulating in the House of Representatives does this signal a belief that on the part of the Patent Office that patent reform is dead? The patent reform passed by the Senate and that being considered by the House has revised post-grant review proceedings, so wouldn’t it be wise to wait to revamp reexamination until after patent reform passes, that is if it seems likely to pass?

Both the House and Senate bills create the opportunity for continual and constant challenges, one right after another. For example, challengers could tie up issued patents in post-grant review, followed by inter partes review and subsequently, or simultaneously, by challenges in one of the Federal District Courts. Thus, the settling of patent rights seems a distant dream if a well funded challenger wants to tie up a patent. The only hope for the patent owner is that with every subsequent challenge it becomes more difficult to challenge. That is what S. 23 sets up by having a “substantial new question of patentability” standard to initiate a post-grant review and then a much heightened “likelihood of success” standard to institute inter partes review.

BIO also is concerned about the inclusion of broader prior user rights in the House bill, and believes that this issue, coupled with the harmful inter partes review changes, could set back efforts to pass meaningful patent reform this year by undermining the broad coalition of American innovators currently supporting patent reform.

Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating. The House patent reform bill is largely identical to the Senate version – S. 23. There are some differences, one rather major difference, but the Senate first to file provisions remain intact. The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23. The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges. It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.

The Board’s analysis might interest patent prosecutors who routinely face rejections based on “applicant’s admissions,” not to mention the applicants who feel obliged to submit hundreds of litigation documents to comply with the duty of disclosure. Similarly surprised will be the litigators who ask whether admissions in pleadings are binding or can be withdrawn, not whether they are admissible. The Board’s refusal, because of lack of resources, to compare Smucker’s accused commercial squeeze bottle with the disclosure of the Seaquist reference is also open to question, especially since there does not appear to be any dispute regarding the structure of Smucker’s commercial nozzle. Reexamination practitioners take note.

I can’t tell you the reason why companies choose to be targets, but I think I have a compelling idea. Those companies that are the ones who complain about patent trolls are also the ones who continually are on Capitol Hill lobbying for patent reform, which in their mind is really only appropriate when it makes issued patents easy to challenge and much more difficult to get. These are the folks who built their corporate empires on patents, growing from small company to mega-giant company while building an enormous intellectual property portfolio heavily dominated with patents that gave them a competitive advantage. Now that they have their market dominant position they really don’t need the patents so much because they have their market power to insulate them from competition, so they want to make it harder for the next individual inventor, start-up tech business or small business to innovate, protect and grow up the corporate food chain.

Cumulative statistics released by the USPTO demonstrate steady growth in the number of requests for reexamination being filed generally (particularly inter partes) since the advent of third-party participation in 1999. Between January 1, 1999 and December 31, 2009 the USPTO Official Gazette noticed 5,594 requests for reexamination. Of these, 97 or 1.7% were requests for reexamination of design patents. Of these 97 reexaminations, 85 or 88% were ex parte and 12 or 12% were inter partes.

Whatever your opinion of the business model, it is impossible to ignore the fact that Cheryl Milone has turned Article One Partners a major player in the patent research field. Article One is attracting big name members to the Board of Directors, they have started a patent quality review blog and Milone was recently invited to the White House to participate in a round-table event, which she talks about in our conversation. So, without further ado, here is my conversation with Cheryl Milone. We talk patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more.

Only one court (District of Minnesota) seemed to give much consideration to the argument that plaintiff would be unduly prejudiced by defendant’s continuing allegedly infringing activity during the stay. One court acknowledged that a party may be prejudiced by the delay of the stay if it can be shown that the ability to gather evidence would be compromised by the stay.

Did you know that while a total of 4,849 ex parte and inter partes patent reexamination requests were filed from 1999 to 2009, only 55 are reexaminations of patents associated with FDA approved products and listed in the FDA’s Orange Book? This is just one of the most surprising and interesting facts that emerged from our first of its kind…

Just last week I wrote an article about district courts being increasingly reluctant to order a stay of a pending patent infringement litigation even when the United States Patent Office has granted reexamination. To quote the words of Lee Corso of ESPN College Football fame, “not so fast my friend!” Courtesy of the Docket Report daily patent litigation newsletter, I…

Back in 2007, a default judgment was entered in a Nevada district court against the well known Internet gambling website Bodog.com for infringement of U.S. Patent 5,564,001. (1st Technology LLV. v. Rational Entertainment LTDA., Rational Poker School Limited, Bodog Entertainment GroupS.A., Bodog.com, and Futurebet Systems Ltd.) As Internet gambling is illegal in the U.S. the folks at Bodog chose not…

Over the last several months large law firms have opened Reexamination Practice Groups and even starting blogs dedicated solely or in part to exploring the issues presented by Reexamination.  And as I am writing, PLI is presently hosting day 1 of a two day Reexamination and Reissue program at its San Francisco headquarters. The program titled Reissue and Reexamination Strategies…

I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway.  The conference has been a good one with some excellent presentations.  This morning there was a Bilski presentation, and since then we have…