Posts Tagged: "reexamination"

Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non?appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute. Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.”

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

On April 21, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a modified, precedential order reversing the Patent Trial and Appeal Board’s (PTAB’s or Board’s) decision to deny U.S.A. Dawgs and Mojave’s motion to substitute, holding that “the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.” The original order was issued in February. Judge O’Malley dissented to the latest order.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday upheld an Arkansas district court’s decision to grant Morris & Associate Inc.’s motion for summary judgment against John Bean Technologies Corporation’s infringement claims, based on the doctrine of equitable intervening rights. The opinion marked the first time the court has addressed the “boundaries of the phrase ‘protection of investments’ in [35 U.S.C.] § 252”, which outlines the effect of reissued patents.  

On May 13, patent owner Opticurrent, LLC, filed an emergency motion for leave to file a supplemental motion for judgment  in a patent infringement case being fought out in the Northern District of California against high-performance semiconductor supplier Power Integrations, Inc. The motion, which ultimately asks the district court to render judgment on Power Integrations’ patent invalidity claims, alleges that the defendant has engaged in “gamesmanship” meant “to derail the Article III court system in the event of an adverse outcome on infringement by… manufacturing a race to an administrative outcome intended to circumvent the authority of this Court.” The case goes back to April 2016, when Opticurrent first filed charges against Power Integrations, alleging infringement of U.S. Patent No. 6958623, titled Three Terminal Noninverting Transistor Switch. Power Integrations followed with a counterclaim in which it asserted invalidity of the ‘623 patent, submitted expert discovery, and filed a motion for summary judgment of invalidity based on one of its alleged prior designs, but not based on any other reference contained within its invalidity contentions or expert report.

Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

InvestPic filed a combined petition for panel rehearing and rehearing en banc on June 19, 2018, making two arguments. First, that the original decision must be vacated and remanded because the claims considered by the district court and the panel were surrendered as the result of two reexaminations that ultimately resulted in the original claims being lost, with new claims awarded in their place. Second, that the panel’s decision is alleged to be inconsistent with decisions of prior panels, which found claims lacking improvements in the physical-realm could still be patent eligible improvements. This second argument goes on to assert that the ruling of the panel would effectively preclude groundbreaking innovations in the field of data science to be considered patent eligible moving forward.

Along with the willfulness finding, the Federal Circuit also overturned findings of no invalidity on a patent that had already survived multiple reexaminations at the U.S. Patent and Trademark Office in a decision giving patent owners further reason to question whether the Federal Circuit may be more aligned with anti-patent viewpoints… “We hold that a reexamination confirming patentability of a patent claim alone is not determinative of whether a genuine issue of fact precludes summary judgment of no invalidity,” the Federal Circuit’s opinion reads.

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.

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.”

The Board failed to address all grounds for proposed rejections under the APA by ignoring certain arguments made by Vicor during the reexamination. Additionally, the Board failed to address all four Graham factors. “[E]vidence relating to all four Graham factors…must be considered before determining whether the claimed invention would have been obvious…” The Board’s decision was erroneous because the same panel reached inconsistent conclusions on the same issue between the same parties and on the same record, and without explanation.

The Federal Circuit vacated and remanded the Board’s finding of obviousness of certain challenged claims based on a means-plus-function limitation, affirmed the Board’s finding of obviousness as to other challenged claims and affirmed the Board’s findings that the prior art discloses all other limitations of the challenged claims on appeal… In a patentability determination, the Board must identify the structure of a means-plus-function limitation disclosed in the specification; it is insufficient to merely disagree with patentee’s arguments. Additionally, if a practitioner reopens prosecution and amends claims during inter partes reexamination, additional prior art can be cited against the amended claims.