Prior Art Admission Burns Patentee in Reexam at CAFC

US Court of Appeals for Fed CircRecently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination. Chief Judge Rader, Judge Newman and Judge Dyk were on the panel.

Victor Manuel Celorio Garrido appealed from a decision of the Patent Trial and Appeal Board relative to the inter partes reexamination of U.S. Patent No. 6,213,703. The Board affirmed the Patent and Trademark Office (“PTO”) examiner’s rejection of all but six claims as anticipated or obvious over the prior art. Garrido appealed to the Federal Circuit, arguing that the Board erred by relying on prior art references that were not published or publicly accessible prior to the filing date and by failing to address alleged misconduct by the requestor.  The Federal Circuit panel concluded that the Board did not err and that the claims of misconduct were unsupported.

The ’703 patent, which claims priority to a predecessor application filed on October 3, 1997, is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. The ’703 patent’s specification explains that the invention is a step-by-step method and a system for formatting, printing, and binding books, magazines, or other printed material.

(more…)

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Reexamination Practice and Evolution – USPTO Perspective

Welcome back to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Reexamination Practice and Evolution - USPTO Perspective. Our featured panelist is Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office. Below are some the highlights:

Revision of Standard for Granting an Inter Partes Reexamination Request: the final rule implements the part of Section 6 of the AIA directed to inter partes reexamination. Inter partes reexamination will be replaced by inter partes review. The reasonable likelihood standard is different from the substantial new question standard. It doesn’t require that the requester establish a prima facie case, and the reasonable likelihood standard doesn’t apply to ex parte reexaminations either.

Miscellaneous Post Patent Provisions Rule Package: The comment period closes March 5, 2012. The office has an obligation to make sure the reexamination isn’t being filed by someone who shouldn’t be filing it. This notice of propose rulemaking implements the estoppel provisions of sections 6(a) and 6(d), which bar a 3rd party requester from filing or maintaining an ex parte reexamination after a final decision has issued in a post grant or inter partes review on the same patent that was requested by the same 3rd party.

Supplemental Examination and Revisions of Reexamination Fees: Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent. There is no 3rd party participation permitted at all. Supplemental exam has 2 parts – the supplemental exam itself and the supplemental reexamination portion. “Information” that forms the basis of the request is not limited to patents and printed publications. Within 3 months from the filing date of the request, the Office must decide whether any of the items of information filed with the request raises a substantial new question of patentability.

We’ll be back after the break with more from the Post-Grant USPTO Proceedings Seminar!

Resolving Differences: How the Federal Circuit Treats Divergent USPTO and District Court Rulings


The following article discussing what happens when the Federal Circuit is faced with conflicting USPTO and district court determinations comes courtesy of Lisa Dolak, Professor of Law at Syracuse University and Practice Center Contritor.

Concurrent litigation and reexamination proceedings, although related in that they concern the same patent(s) and (typically, presumably) at least some of the same claims, proceed independently. And, different standards govern validity and claim construction in the two venues. As the Federal Circuit explained in In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008):

In civil litigation, a challenger who attacks the validity of patent claims must overcome the presumption of validity with clear and convincing evidence that the patent is invalid. . . . In [USPTO] examinations and reexaminations, the standard of proof – a preponderance of evidence – is substantially lower than in a civil case; there is no presumption of validity.

Id. at 1376. Additionally, “unlike in district courts, in reexamination proceedings ‘[c]laims are given ‘their broadest reasonable interpretation, consistent with the specification. . .’’” Id. at 1377-78 (quoting In re Trans Texas Holdings Corp., 498 F.3d 1290, 1296-97 (Fed. Cir. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984))). Accordingly, as the Federal Circuit has noted, “the two forums take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988). (more…)

CAFC Reverses USPTO Anti-Patentee Reissue Policy: In re Tanaka

At issue in the In re Tanaka case is whether the addition of narrower, dependent claims in patent reissue is an “error” that the reissue statute is supposed to address.  On April 15, 2011, the CAFC  ruled that this is in fact permissible “error” contemplated by the patent reissue statute.  Charles Gorenstein, Partner at Birch Stewart Kolasch & Birch, sent in this article discussing the In re Tanaka decision.

In a decision dated April 15, 2011, the United States Court of Appeals for the Federal Circuit reversed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences by which the USPTO attempted to limit the rights of patentees to file for reissue of patents.  In re Tanaka, Appeal No. 2010-1262, April 15, 2011.  Had it been permitted to stand, the underlying Board decision would have, additionally, cast a cloud over the validity and value of many already-issued patents

Tanaka filed an application for reissue of his patent.  Ultimately, the correction sought to be made was the addition of a single dependent claim, narrower in scope than the existing patent claims, while retaining all of the original patent claims (and making no changes to the specification or drawings).  The U.S. Patent and Trademark Office Board of Appeals and Interferences (the Board) ruled that this was not proper pursuant to the reissue statute, 35 U.S.C. §251.  The Board reasoned that if nothing was to be changed in the original patent claims, specification or drawings, the patent could not be deemed “wholly or partly inoperative or invalid” as set forth in §251.  While The Board acknowledged, at least implicitly, that the failure to include an additional narrower claim in the patent might be an error without deceptive intention, it was not an error of such a nature that could be corrected by reissue. (more…)