Tonight, I suggest reading Santa Clara University assistant law professor Brian Love and Unified Patents' COO Shawn Ambwani's Inter Partes Review: An Early Look at the Numbers.
The abstract of the authors: "In the roughly two years since inter partes review replaced inter partes reexamination, petitioners have filed almost two-thousand requests for the Patent Trial and Appeal Board to review the validity of issued U.S. patents. As partial data on inter partes review (IPR) has trickled out via the blogosphere, interest from patent practitioners and judges has grown to a fever (and sometimes fevered) pitch. To date, however, no commentator has collected a comprehensive set of statistics on IPR. Moreover, what little data currently exists focuses on overall institution and invalidation rates — data that, alone, gives us little idea whether IPR is thus far accomplishing its original goal of serving as a quick, efficient alternative to defending patent suits filed in federal court, particularly those initiated by non-practicing entities (NPEs).
This Essay aims to fill both gaps by reporting the findings of an empirical study tracking the outcome of IPRs and their impact on co-pending litigation. As described in greater detail below, we find that: Petitions for IPR are instituted for at least one challenged claim 84 percent of the time; Among instituted IPRs, all challenged claims are instituted 74 percent of the time; Among IPRs that reach a final decision on the merits, all instituted claims are invalidated or disclaimed more than 77 percent of the time; IPRs challenging NPE-owned patents are more likely to be instituted and, on average, are instituted for a larger share of challenged claims, but have their claims invalidated at a lower rate; Litigation proceeding in parallel with an instituted IPR is stayed about 82 percent of the time.
Though it is too early to draw sweeping conclusions from these statistics, they suggest that inter partes review promises to be considerably more potent than inter partes reexamination and, moreover, to have a substantial impact on co-pending patent litigation, particularly suits filed by NPEs."
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label inter partes reexamination. Show all posts
Showing posts with label inter partes reexamination. Show all posts
Thursday, October 23, 2014
Saturday, February 8, 2014
PTAB - Cyrus Morton - Do the new patent office trials really make patent litigation cheaper? - A Comment
In IP: Do the new patent office trials really make patent litigation cheaper? Mr. Cyrus Morton tells us patent litigation is famously expensive, but then argues that because you can lose at various stages in patent office trials and end up in court, they are on average probably not much more cost effective.
Does the data support his views? The AIPLA Report of the Economic Survey stated in 2013 (1) when $1-25 million is at risk the median patent infringement suit cost is $1.4 million through discovery and $2.6 million including all costs; and (2) when more than $25 million is at risk the median patent infringement suit cost is $3.5 million through discovery and $5.5 million including all costs.
How about the cost of going to trial before the Patent Trial and Appeal Board (PTAB)? The inter partes review is recent so the AIPLA Economic Survey has not published any data. However, for inter partes reexamination, which is the closest procedure to inter partes review IPR, the AIPLA Report of the Economic Survey states in 2013 the median costs are (1) $50K for filing of a request, (2) $70K including the first patent owner response, (3) $100K including all patent owner responses, (4) $130K including an appeal to the Board, and (5) $250K including an appeal to federal court.
However, it is important to note IPR has fundamental differences with inter partes reexamination, which would raise its costs. IPR is more trial-like, has limited discovery and motion practice, and a hearing, unlike inter partes reexamination which has a prosecution style after the request is granted.
Although the AIPLA does not break out how much is at risk in the inter partes reexamination, if we triple the $250K total of inter partes reexamination to give us a rough comparison it still looks favorable to patent litigation, e.g., $750K vs. $2.6 million. Thus, if you get into a patent dispute, it is smart to consider filing a request for ex partes reexamination (the lowest cost option) and/or filing a petition for inter partes review and in either case requesting a stay of any pending patent litigation.
Copyright © 2014 Robert Moll. All rights reserved.
Does the data support his views? The AIPLA Report of the Economic Survey stated in 2013 (1) when $1-25 million is at risk the median patent infringement suit cost is $1.4 million through discovery and $2.6 million including all costs; and (2) when more than $25 million is at risk the median patent infringement suit cost is $3.5 million through discovery and $5.5 million including all costs.
How about the cost of going to trial before the Patent Trial and Appeal Board (PTAB)? The inter partes review is recent so the AIPLA Economic Survey has not published any data. However, for inter partes reexamination, which is the closest procedure to inter partes review IPR, the AIPLA Report of the Economic Survey states in 2013 the median costs are (1) $50K for filing of a request, (2) $70K including the first patent owner response, (3) $100K including all patent owner responses, (4) $130K including an appeal to the Board, and (5) $250K including an appeal to federal court.
However, it is important to note IPR has fundamental differences with inter partes reexamination, which would raise its costs. IPR is more trial-like, has limited discovery and motion practice, and a hearing, unlike inter partes reexamination which has a prosecution style after the request is granted.
Although the AIPLA does not break out how much is at risk in the inter partes reexamination, if we triple the $250K total of inter partes reexamination to give us a rough comparison it still looks favorable to patent litigation, e.g., $750K vs. $2.6 million. Thus, if you get into a patent dispute, it is smart to consider filing a request for ex partes reexamination (the lowest cost option) and/or filing a petition for inter partes review and in either case requesting a stay of any pending patent litigation.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, December 31, 2012
Patent Planet's Most Popular Posts - December 2011 - 2012
Almost midnight in Los Altos, California. I am struggling with the task of writing up a summary of the most important patent news in 2012. Hmm lots of material to consider (212 published posts plus 11 draft posts). Finally, I decided to take the easier route: let Blogger Stats do the work. Yes, that's my ticket out of here!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, October 20, 2012
Belkin International v. Kappos - Inter Partes Reexamination - Scope Limited to Prior Art Raising the Substantial New Question of Patentability
On September 16, 2012, the America Invents Act ended the ability to request inter partes reexamination.
However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.
A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!
Here's what the Federal Circuit had to say:
If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.
Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.
The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.
The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.
The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.
Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.
The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.
The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).
The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.
The Federal Circuit held:
Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.
Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.
Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.
Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.
The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.
Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.
Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.
The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.
The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.
The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.
Copyright © 2012 Robert Moll. All rights reserved.
However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.
A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!
Here's what the Federal Circuit had to say:
If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.
Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.
The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.
The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.
The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.
Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.
The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.
The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).
The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.
The Federal Circuit held:
Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.
Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.
Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.
Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.
The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.
Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.
Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.
The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.
The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.
The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, September 10, 2012
America Invents Act - Last Day to File Inter Partes Reexamination Requests is September 15, 2012
The USPTO issued a federal register notice here reminding that the last day to file a request for inter partes reexamination is September 15, 2012.
If the request fails to obtain a filing date, the notice states the USPTO cannot be relied upon to notify in time to file corrected papers. It warns a request (or corrected request) submitted on or after September 16, 2012, will not be accorded a filing date, and will not be granted.
Yes, it's a sharp transition, but also gives last minute requesters guidance.
Copyright © 2012 Robert Moll. All rights reserved.
If the request fails to obtain a filing date, the notice states the USPTO cannot be relied upon to notify in time to file corrected papers. It warns a request (or corrected request) submitted on or after September 16, 2012, will not be accorded a filing date, and will not be granted.
Yes, it's a sharp transition, but also gives last minute requesters guidance.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, August 23, 2012
America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
A brief reminder the America Invents Act (AIA) makes major changes to patent reexamination on September 16, 2012.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, August 11, 2012
America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel
The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, May 26, 2012
Plasmart v. Kappos & Wang - Federal Circuit Reverses Validity in Inter Partes Reexamination - Non-Precedential Opinion
Let's talk about the Federal Circuit's recent decision Plasmart, Inc. v. Kappos & Wang that reversed the Board of Patent Appeal's decision that all claims were patentable during an inter partes reexamination.
Unlike many of the tech inventions, you may have seen this one ... at least it's in my driveway -- it's the ever present twistcar. It's not recommended for adults, but you simply twist the handlebars to make it go. See U.S. Patent No 6,722,674 (the '674 patent). Briefly, the invention relates to a safety wheel 24 added to prevent a scooter from flipping over. The wheel 24 is connected to the free end of a supporting arm (23) that extends frontwardly from a twister member (2) to which a pair of driving wheels (21 and 22) are also attached. See col.3, lines 30-45 and Figures 4 and 5.
Even though Plasmart is "low tech" some real money is at stake, the case was worth reading and 55 comments on Patently-O's article suggested others felt the same way. I was surprised that the case was so analyzed and discussed and yet only one comment noted it is a non-precedential opinion.
As a non-precedential opinion Plasmart has limited utility, because it is not the law and cannot be cited in legal briefs. Despite its depth of analysis, what it would add to the body of the law and how prospective defendants might like to cite it, Federal Circuit Rule 47.6(b) says it cannot be be cited as precedent. One commentator recently noted 80% of federal court opinions are designated non-precedential. Yet, the Federal Circuit warns any attorney using a non-precedential opinion in a brief (See In re violation of Rule 28(c)) would violate the Federal Rules of Appellate Procedure or the CAFC Local Rules of Practice and likely be sanctioned.
Copyright © 2012 Robert Moll. All rights reserved.
Unlike many of the tech inventions, you may have seen this one ... at least it's in my driveway -- it's the ever present twistcar. It's not recommended for adults, but you simply twist the handlebars to make it go. See U.S. Patent No 6,722,674 (the '674 patent). Briefly, the invention relates to a safety wheel 24 added to prevent a scooter from flipping over. The wheel 24 is connected to the free end of a supporting arm (23) that extends frontwardly from a twister member (2) to which a pair of driving wheels (21 and 22) are also attached. See col.3, lines 30-45 and Figures 4 and 5.
Even though Plasmart is "low tech" some real money is at stake, the case was worth reading and 55 comments on Patently-O's article suggested others felt the same way. I was surprised that the case was so analyzed and discussed and yet only one comment noted it is a non-precedential opinion.
As a non-precedential opinion Plasmart has limited utility, because it is not the law and cannot be cited in legal briefs. Despite its depth of analysis, what it would add to the body of the law and how prospective defendants might like to cite it, Federal Circuit Rule 47.6(b) says it cannot be be cited as precedent. One commentator recently noted 80% of federal court opinions are designated non-precedential. Yet, the Federal Circuit warns any attorney using a non-precedential opinion in a brief (See In re violation of Rule 28(c)) would violate the Federal Rules of Appellate Procedure or the CAFC Local Rules of Practice and likely be sanctioned.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, May 18, 2012
In re Baxter International - Federal Circuit Affirms Ex Parte Reexamination Invalidity Over Litigation Validity
In the recent case In re Baxter International, the Federal Circuit affirmed the Board's decision in an ex parte reexamination that claims 26-31 of U.S. Patent No. 5,247,434 (the '434 patent) are invalid despite the fact the Federal Circuit previously affirmed a federal court's decision that claims 26-31 were not invalid. That's startling! Doesn't the Federal Circuit agree with its previous decision? And no, it is not a matter of a different CAFC panel.
"Lest it be feared that we are erroneously elevating a decision by the PTO over a decision by a federal district court, which decision has been affirmed by this court, the following additional comments must be made. When a party who has lost in a court proceeding challenging a patent, from which no additional appeal is possible, provokes a reexamination in the PTO, using the same presentations and arguments, even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion. However, the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. Usually one would expect that any such reexamination, such as the one before us, would raise new issues. In this case, the patent examiner relied on new prior art that had not been raised in the prior district court proceeding. Why Fresenius [the defendant in related litigation] did not present that prior art before the district court we do not know. But the Director apparently found that a substantial new question of patentability had been raised and the examiner was then entitled to conduct a reexamination on the basis of the new art presented and her search of the prior art. Thus, this case is not about the relative primacy of the courts and the PTO, about which there can be no dispute. Finally, we could not conclude that the PTO was barred from conducting the reexamination of the ’434 patent because of the final judgment in Fresenius without over-ruling Ethicon and Swanson, which we cannot do."
In re Baxter International highlights ex parte reexamination is not subject to a legal estoppel from the court decision such as applies to inter partes reexamination. Further, it reminds that patent challengers have a lower evidentiary standard in ex parte reexamination than in federal court. In ex parte reexamination, the challenger must only prove invalidity by a preponderance (i.e., it's more likely than not); in court, the challenger must prove invalidity by clear and convincing evidence. Accordingly, ex parte reexamination may be preferably over litigation if you seek to prove a US patent is invalid over written prior art.
Copyright © 2012 Robert Moll. All rights reserved.
The Federal Circuit explained as follows:
In re Baxter International highlights ex parte reexamination is not subject to a legal estoppel from the court decision such as applies to inter partes reexamination. Further, it reminds that patent challengers have a lower evidentiary standard in ex parte reexamination than in federal court. In ex parte reexamination, the challenger must only prove invalidity by a preponderance (i.e., it's more likely than not); in court, the challenger must prove invalidity by clear and convincing evidence. Accordingly, ex parte reexamination may be preferably over litigation if you seek to prove a US patent is invalid over written prior art.
Copyright © 2012 Robert Moll. All rights reserved.
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