Archive for the ‘Substantial New Question (SNQ)’ Category

AIA Patent Trials Differ from Reexamination

Saturday, April 20th, 2013

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review or CBM) are substantially different than traditional reexamination.  Some of these differences are summarized in the table below (click on the table to enlarge it):

Other than legacy inter partes reexaminations, the Central Reexamination Unit (CRU) is currently only charged with processing ex parte reexaminations.  What remains to be seen is how ex parte reexamination will change as the CRU processes the legacy reexaminations and its docket frees up.

Preissuance Submission Final Rules Published July 17, 2012

Friday, July 20th, 2012

The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).

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Do You Want That Post-Grant Review Super-Sized? – Part III

Tuesday, November 22nd, 2011

This is the third post in a series of articles on PGR strategies.  In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes.  By statute, the PGR must complete in 1 to 1 ½ years.  Part II addressed some of the issues that the Petitioner faces during a PGR and when the Petitioner may benefit from a 6 month extension.  This post will provide some insight to the Patent Owner’s analysis of what to do if its patent is tested in a PGR.

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Strategic Use of Reexamination in view of the Patent Reform Bill

Monday, August 22nd, 2011

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit.  The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”  The powerpoint presentation materials can be found here.  The materials assume that the bill currently pending before the Senate is passed substantially intact.  The speech focuses primarily on post-grant review and inter partes review.  It also touches on supplemental examination and the proposal to provide PGR-like review of “covered business methods.”  We shall see how Congress votes on the bill in September.

Lockwood Cert Petition Seeks Clarification of Redress for Alleged “Sham” Reexamination Request

Saturday, May 7th, 2011

In a Petition for Writ of Certiorari dated April 28, 2011, inventor Lawrence B. Lockwood and his company, PanIP, LLC, requested review of the judgment of the Federal Circuit denying its petition for rehearing and rehearing en banc.  (The underlying order of the Court of Appeals was issued Nov. 15, 2010, and is reprinted at Lockwood v. Sheppard, Mullin, Richter & Hampton, LLC, No. 2010-1189, 2010 WL 4721220 (Fed. Cir. Nov. 15, 2010).)

Mr. Lockwood alleges that the Sheppard, Mullin firm and certain individual attorneys “initiated without a reasonable basis, in a fraudulent and deceptive manner, and with the aim of depriving [Lockwood], the patent holder and an inventor of computerized sales systems, of his right to enjoy the fruits of two of his patents.”  Mr. Lockwood formed PanIP, LLC, and exclusively licensed his patent portfolio to it.  By May 2003, PanIP had entered into “licensing relationships with over twenty-five companies, headquartered in fifteen different states, and was in negotiation with many others.”

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The Patent Office Wants Your Ideas for Streamlining Reexamination

Wednesday, April 27th, 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?

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Petitions Practice for SNQ Findings in Inter Partes Reexaminations

Monday, April 4th, 2011

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!

Use Petitions to Reverse Determination of No SNQ in Inter Partes Reexaminations

Saturday, April 2nd, 2011

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…)

Patent Owner Reexamination Requests with Parallel Litigation

Friday, March 25th, 2011

You have worked hard and obtained a patent for your company.  You do your homework and believe that your competitor is infringing your patent.  You ultimately engage the help of a litigation team and sue the competitor for patent infringement.  But your competitor is now a defendant and responds with allegations of invalidity based on publication prior art.

Your patent counsel provides some options.  One option is to plow ahead with the litigation and maintain course.   Another option is to file a reexamination request with the publication prior art and ask for a stay of the litigation pending the outcome of the reexamination. (more…)

Microsoft v. i4i – Part III: Changing the Presumption of Validity: Impact on Reexamination Practice

Tuesday, March 15th, 2011

Posted March 14, 2011

The prior post discussed only some of the many options the Supreme Court has in the Microsoft v. i4i case (i4i).  In summary, the presumption of validity of a patent as we currently know it may be changed and the standard of proof required for an accused infringer to prove invalidity may be lowered from the current “clear and convincing” evidence standard. 

But we have all read that the presumption of validity does not apply in reexamination, right?  And the i4i case turned on evidence of a statutory bar concerning offer of sale evidence that could have been difficult to introduce in a reexamination context because of the limited scope of reexamination.  So how can a change to the presumption of validity affect reexamination?  We have to assume different Supreme Court holding scenarios to answer that question.  Of course, these scenarios are not exhaustive and are used simply to demonstrate the commensurate impact on reexamination practice. (more…)