Marine Polymer Technologies, Inc. v. HemCon, Inc. (Fed. Cir. 2011) is a widely reported case that raises some questions about the scope of the application of intervening rights. It involves a matter where the literal language of a claim was not amended, yet absolute intervening rights were still found to apply to the accused infringer. Marine Polymer owns U.S. Pat. No. 6,864,245 (the ’245 patent), which claims a polymer p-GlcNAc that accelerates hemostasis (the process which causes bleeding to stop) and is useful in trauma units for treating serious wounds. Marine Polymer sued HemCon, alleging that HemCon infringed claims 6, 7, 10, 11, 12, 17, and 20 of the ’245 patent. (more…)
Archive for the ‘Appealable’ Category
Now that the America Invents Act has become law there are several new provisions for patent challengers to consider. For example, the Act includes:
- preissuance submissions by third party challengers (Sec. 8 — see the last post);
- Post-Grant Review (Sec. 6 – see slides*);
- Inter Partes Review (Sec. 6 – see slides*);
- Business Method Transitional Proceedings (Sec. 18 – see slides*); and
- Formation of the Patent Trial and Appeals Board (PTAB) (Sec. 7 – see slides*).
(*Many of the features of the last 4 bullet items on this list are discussed in my PowerPoint slides presented at the AIPLA Electronics and Computer Law Summit on August 16, 2011.)
In Fractus, S.A. v. Samsung Electronics Co., Ltd., et al. (6:09-CV-203, EDTX), a jury gave a verdict of patent infringement of four different patents owned by Fractus S.A. against Samsung to the tune of $23,129,321 in damages. The jury found that Fractus proved the infringement was willful by clear and convincing evidence. The Verdict Form provides details as to the patents and the particular claims found to be infringed. The infringed patents are:
- U.S. Pat. No. 7,015,868 (see the nonfinal rejections of claims 26 and 35 in reexamination control no. 95/001,390 for example);
- U.S. Pat. No. 7,123,208 (see the nonfinal rejections of claims 7 and 12 in reexamination control no. 95/001,389 for example);
- U.S. Pat. No. 7,397,41 (see the nonfinal rejections of claims 14 and 30 in reexamination control no. 95/001,482 for example); and
- U.S. Pat. No. 7,394,432 (see the nonfinal rejection of claim 6 in reexamination control no. 95/001,483).
The chronology of the dispute between TiVo, AT&T and Microsoft is complex and so are the digital video recorder (DVR) technologies covered in the patents that are asserted. All of these complexities seemed to weigh in favor of a stay in the present case. Some background is necessary to understand these complexities.
On August 26, 2009, TiVo sued AT&T in the Eastern District of Texas alleging infringement of its digital video recorder patents (TiVo Inc. v. AT&T Inc., et al., Case No. 2:09-cv-00259-DF). In March 2010, AT&T sued TiVo in the Northern District of California for patent infringement of its DVR patents (AT&T Intellectual Property I, L.P. v. TiVo Inc., No. 4:10-CV-01059-SBA, Dkt. No. 1 (N.D. Cal. Mar. 12, 2010)). Microsoft moved to intervene in the Eastern District of Texas action 0n January 15, 2010. TiVo did not oppose and Microsoft’s motion was granted March 31, 2010. That case is set for trial in October 2011.
On Monday, April 25, 2011, the Federal Register announced a public meeting to solicit opinions on a number of changes being considered at the U.S. Patent Office to streamline both ex parte reexamination and inter partes reexamination proceedings. Written comments can also be submitted to the Patent Office by June 29, 2011.
Some of the questions asked are:
1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?
2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?
A prior post emphasized the importance of a well crafted petition in cases where the examiner determines that there is no SNQ in an inter partes reexamination request. Recall that the BPAI determined it had no jurisdiction to review of a determination that there was no SNQ (for certain claims) in inter partes reexamination control no. 95/001,089 (Belkin International v Optimumpath 95 001089).
An example of a successful petition (3PR petition here) can be found in inter partes reexamination control no. 95/001,461. On December 20, 2011, the Third Party Requester petitioned the order finding certain proposed SNQs cumulative to issues raised in the ex parte prosecution of the patent (U.S. Patent No. 7,213,762). The Director of the Central Reexamination Unit granted the petition on January 21, 2011(granted petition).
But note that the Patent Owner filed a “Patent Owner’s Petition to Vacate Director’s Decision” on February 14, 2011. And the Third Party Requester filed an “Opposition Under 37 CFR 1.182 and 1.183 to Patent Owner’s Petition to Vacate Director’s Decision” on March 11, 2011. So the Central Reexamination Unit has more petitions on this issue to consider. Stay tuned!
You see a competitor’s patent and believe it is invalid. You perform a prior art search and find prior art that you think would render at least some of the patent claims unpatentable. So after thinking about it some more, you decide to file a reexamination request in the Patent Office. In that request you illustrate that the prior art was not considered before (or can be considered in a new light) and you propose how the prior art can be used to reject the patent’s claims. You file the request.
To your surprise, you learn that the Patent Office determined that some of your proposals were substantial new questions of patentability (SNQs) and some were not. Therefore, a reexamination is ordered, but not against all of the claims you requested. You petition the Director to order reexamination for the proposed substantial questions of patentability that were not adopted. The Director denies that petition. What can you do? (more…)
On June 25, 2010, the Patent Office clarified its procedure for seeking review of a finding of a substantial new question of patentability in ex parte reexamination proceedings. See Federal Register Notice v75 pp. 36357-8 (6-25-10) at this link: (Fed Reg v 75 pp36357-8 (6-25-10) – re Ex Parte Reexam Proc). In short the Notice provides that:
1) If the patent owner timely challenged a SNQ adopted by the Office to order the reexam (an “initial SNQ”), the patent owner can have the BPAI consider that issue on appeal;
2) If the patent owner failed to challenge the initial SNQ, but it was adopted prior to 6/25/2010, the patent owner can have the BPAI consider that issue in appeal.
But what happens if a new ground of rejection is proposed by the Examiner in ex parte reexamination after the reexamination is ordered? Ex parte Yasukochi et al. relates to what is appealable vs. what is petitionable. I think it can be summarized roughly as:
1) A SNQ to start a reexamination can be disposed of in the reexam, and a new rejection can be entered into the reexam.
2) If the new rejection is based on a new reference not related to the SNQ, then a procedural issue arises which is petitionable, but not appealable under the facts in ex parte Yasukochi.
In this case, a rejection was entered during the reexamination on prior art not in the request (which I believe happened to be from prior art found by the Examiner after the order for the reexam). That entry was deemed to be procedural and the patent owner must use petitions practice to challenge it because the BPAI will not review it on appeal.
So, in cases like this one, a patent owner can address the procedural issue by petition in the reexam because the BPAI may not review it on appeal. Of course, this is an interesting result in view of recent warnings by the Patent Office to be careful about overzealous use of petitions.