The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.
Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:
The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of the seminar’s Course Handbook.
In just a few weeks, new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences (BPAI) become effective. The new rules introduce helpful simplifications relative to existing practice and provide for enhanced procedural monitoring to reduce unnecessary appeals. I sat in on the recent PLI One Hour Briefing entitled,”USPTO’s New Rules of Practice for Ex-Parte Appeals: Change and Simplification for 2012″ to become more acquainted with the procedural changes and guidelines to come. The briefing was lead by Scott A. McKeown and Lee E. Barrett, members of Oblon Spivak L.L.P..
Here are some of the highlights:
- The new rules provide changes as well as clarifications. Changes include simplified briefing requirements for appellants and examiners alike, jurisdiction over appeals for when it passes from examiner to the Board, new procedures for challenging undesignated new grounds of rejection, and all rejected claims will be assumed appealed. Clarifications focus on petitions and information disclosure statements during appeal.
- An appeal is presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the office.
- The change of the Board getting jurisdiction over appeal formalizes the streamlined procedure for Appeal Brief review from 2010. This eliminated wasted time before the Board gets jurisdiction, and is more complete than the previous rule.
- Clarifications made to Section 41.37 simplify the briefing experience for appellants. The clarifications set up how the content should be formatted. It is very important to be careful with one’s formatting of an appellate brief, as mistakes in formatting serve as the biggest reason for briefs to get rejected.
- Examiners do not have to provide a statement of grounds of rejection on appeal since appellants are no longer required to do so.
- A summary of claimed subject matter should be done for every claim that is argued separately; a short introduction to the invention is helpful.
- Appellants can raise new arguments in the appeal brief. The burden is on the appellant to explain why the examiner erred. They then must simply point out the error and get on with the point.
- Not every decision can be appealed. A new ground for rejection can be changing the statutory basis of your argument, new calculations in support of overlapping ranges, or new structure in support of structural obviousness.
The hierarchy of the U.S. court system is well established, but recent patent law cases have challenged this hierarchy with the power of government agency – the USPTO to be exact. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, recently wrote two articles concerning the USPTO’s reexamination process and how its parallel nature to patent infringement cases resulted in conflict that’s occurred with the U.S. Court of Appeals of the Federal Circuit (CAFC) as well as with the U.S. District Court in the District of Connecticut. Scott explains the patent law issue:
Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date.
On the other hand, ex parte patent reexamination (EXP) has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for ex parte patent reexamination. In this way, the infringer could attempt to “undo” the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing. (more…)
The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.
Threat of Injunction Dissolves in Flexiteek Litigation
The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.
Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court. For example, patent reexamination may be sought as an avenue to establish objectively reasonable behavior for use in preventing a willfulness finding. (see e.g., the yesterday’s Fairchild Semiconductor press release). Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional fodder for claim construction, or to demonstrate the materiality of a reference subject to an inequitable conduct defense.
Post-trial (damage control) on the other hand, is a litigation inspired use of patent reexamination that seeks to undo the damage inflicted by the ruling of the district court. One of the more well known uses of a patent reexamination filed after a district court judgment was illustrated in In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Translogic had secured an earlier verdict for significant damages against Hitachi, the appeal reached the CAFC at the same time as the appeal rejecting all claims in reexamination, as a result, the infringement verdict was vacated. (more…)
Patent Reform is an issue that has plagued the patent community for quite some time. Will it actually ever happen or is it eternally on hold? Surprisingly, the Patent Office and it’s deficiencies have gotten some well deserved attention in the media and in Congress during the last week. Will this attention actually result in Congressional action on Patent Reform during the fall term? Two of our Practice Center Contributors, Scott Mckeown and Gene Quinn, have passed along articles discussing the recent events and what if anything it may mean for Patent Reform.
Written by Scott Mckeown (partner at Oblon Spivak and our newest Practice Center Contributor)
With Congress on summer hiatus, and significant election uncertainty coming in the Fall, Patent Reform efforts are seemingly on hold (again). Still, last week, the USPTO was able to secure an additional $139 million in funding. H.R. 5874 permits the USPTO to retain $139 million in fees collected from patent applications and patent maintenance fees for fiscal year 2010 “salaries and expenses.”
Senator Leahy, a backer of S.515, in passing the new PTO funding bill took the opportunity to emphasize the importance of the this perenially pending legislation, noting that more needs to be done to modernize and improve our patent system, which is a crucial component of our economic recovery… This bill [the S. 515 manager's amendment] will provide the legal structure we need to allow our inventors to flourish. It will improve our economy and create jobs without adding a penny to the deficit. (more…)