Patent Law Practice Center

Inter Partes Reexamination Mechanics And Results

Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO.  This post is a comprehensive guide to practice before the PTO in inter partes reexamination.  The article covers topics such as what patents qualify for inter  partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability.  Here is an excerpt and link to the full article.

 The Creation of the Inter Partes Reexamination Procedure and Goals Thereof   

Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113.  Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure.  The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]  (more…)

The ITC End-Around District Court Stays Pending Patent Reexamination

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

The greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.”

For those not familiar with the football end-around, this play, as diagrammed above is an exercise in misdirection. With a very aggressive defense going one way, an offensive team fakes into the direction of the defense, only to toss the ball to a player running around the defense in the opposite direction. A form of this tactic was recently executed by Motiva in their dispute with Nintendo. (more…)

Rubbing The Court The Wrong Way In Seeking A Stay Pending Patent Reexamination

Reexamination can be an extremely useful alternative case management strategy.  More and more, litigants are using Reexamination to derail a litigation or limit damage exposure. Potential benefits of patent reexamination for defendants include providing an opportunity to stay concurrent litigation, creating an intervening defense, and providing additional prosecution history for a later claim construction ruling.  For Patentees, patent reexamination may provide a mechanism to add new claims to hedge against invalidity, avoid time consuming reissue proceedings, and target specific claims for reexamination/amendment while insulating others. Oblon Spivak Partner and Practice Center Contributor Scott A. McKeown, sent along this article he wrote with colleague Stephen G. Kunin for Patents Post Grant Blog.  The article discusses the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc., wherein Envisionware was seeking a stay pending patent reexamination.

On August 20, 2010, a motion to stay the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc. (0-09-cv-01594) (NDM) pending the outcome of a parallel patent reexamination was denied. At issue in the litigation are three of 3M’s patents relating to RFID technology, namely 6,232,870, 6,486,780 and 6,857,568. Envisionware requested inter partes reexamination of the ‘780 and ‘568 Patents. Curiously, since the third patent, the ‘870 Patent does not qualify for inter partes reexamination, reexamination of this patent was not sought at all. A non-final office action rejecting  the ’568 Patent claims was issued by the USPTO, the ‘780 Reexamination has yet to begin. On August 2, 2010, Envisionware filed the motion to stay the litigation. (more…)