Post-Grant Practice Primer

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Overview of reexamination, reissue, opposition, and post-grant review proceedings

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Post-Grant Practice Primer

  1. 1. 1 Post-Grant Practice Primer Kevin B. Laurence Matthew C. Phillips for Oregon Patent Law Association December 7, 2009
  2. 2. 2 Disclaimer • These materials are for information purposes only and do not constitute legal advice. Patent issues are fact-dependent and require the assistance of counsel experienced with such issues. These materials do not establish any form of attorney- client relationship nor does attendance at the associated presentation. • These materials may contain inaccuracies, errors or omissions despite our diligent efforts in preparing these materials, for which any liability is disclaimed. • The views expressed in this presentation are solely those of the presenters and do not represent the views of Stoel Rives LLP or clients of Stoel Rives LLP.
  3. 3. 3 Agenda • The big picture • Reissue • Ex parte reexamination • Inter partes reexamination
  4. 4. 4 The Big Picture
  5. 5. 5 Post-Grant Tools for U.S. Patent Owners & Challengers
  6. 6. 6 Tools for U.S. Patent Owners
  7. 7. 7 Tools for U.S. Patent Owners Error in Prior Art Patent Invalid/ Minor Inoperative No Amendment Overclaimed Underclaimed Specification Needed Corrective Ex Parte Certificate of Disclaimer Reissue Claim Reexam Correction Construction
  8. 8. 8 Tools for U.S. Patent Challengers
  9. 9. 9 Tools for U.S. Patent Challengers Prior Art Other Basis (§§ 102, 103, (§§ 101,112) or DP) Printed Not Printed Publication Publication Application Application Filed Before Filed On or 11/29/99 After 11/29/99 Ex Parte Inter Partes Litigation Reexam Reexam
  10. 10. 10 Reissue
  11. 11. 11 Reissue Highlights • Filing for reissue – Only owner can file – Some special requirements re. format and oath – Owner must admit existence of an error • Not all errors are correctable by reissue • Broadening sometimes possible – Filed as a broadening reissue within two-year anniversary of grant – Limited by rule against recapture • Familiar, flexible proceeding – Usual deadlines; extensions of time available – RCE, continuation & divisional possible • Claim changes can have serious consequences • Protests possible
  12. 12. 12 Not All Errors are Correctable by Reissue
  13. 13. 13 Errors Not Correctable by Reissue • Deliberate acts • Inequitable conduct • Failure to meet the requirements of 35 U.S.C. § 112 • Failure to file divisional or continuation application • Undesired or unnecessary terminal disclaimer
  14. 14. 14 Errors Correctable by Reissue • Underclaiming – Must file within two years – Must express desire to broaden – Limited by rule against recapture • Overclaiming • Specification • Drawings • Priority Claim • Inventorship
  15. 15. 15 Errors Corrected in Patents Reissued in 2008
  16. 16. Average Pendency by Error Corrected 16 for Patents Reissued in 2008 * Excludes cases in which errors in the claims and in the priority, inventorship, or specification were corrected, since the pendency required **No change in claim scope for corrections to the claims is generally predominant
  17. 17. 17 Rule Against Recapture • General statement of rule: A patentee is prevented “from regaining, through reissue, subject matter that was surrendered during prosecution of the original patent in an effort to gain allowance of the original claims.” Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006). • Rule is a judicial construct; results from a balance of: – Remedial aspects of the reissue statute – Equitable aspects of the reissue statute
  18. 18. 18 Rule Against Recapture Federal Circuit Three-step Test 1. Determine whether the reissue claims are broader in scope than the patent claims and, if so, in what respects 2. Determine whether the broader aspects of the reissue claims relate to surrendered subject matter – Implicit within this step are two related sub-steps: a) Determine whether subject matter was surrendered b) Determine the scope of the surrendered subject matter 3. Determine whether the reissue claims were materially narrowed in other respects – If material narrowing is found, the recapture rule can be avoided
  19. 19. 19 Rule Against Recapture Current BPAI and PTO View of Scope of Surrender Original Claim: AB Patent Claim: ABC Reissue Claim: SCOPE OF CANCELED AB CLAIM SCOPE OF ABC PATENT CLAIM UNEXAMINED ABCBROADENED TERRITORY – AT LEAST PARTIALLY ABD SURRENDERED ABBROADENEDC AB SURRENDERED A SUBJECT MATTER B ABBROADENED
  20. 20. Effects of Reissue (or Reexamination) 20 on Litigation Issues • Validity Issues – Strengthened presumption – New bases for invalidity • Enforceability Issues – IC during reissue/reexam. – Materiality of ref. in original pros. • Infringement, Liability & Damages Issues – Retroactive effect of changed claims – Intervening rights – Design-arounds – Claim construction – DOE
  21. 21. Effect of Reissue (or Reexamination) 21 on Presumption of Validity • Consideration of reference by PTO strengthens P.O.V. Sanofi-Synthelabo v. Apotex, 470 F.3d 1368, 1375 (Fed. Cir. 2006) (“especially difficult” to overcome) Custom Accessories v. Jeffery-Allan, 807 F.2d 955, 961 (Fed. Cir. 1986) (“[U]pon reissue, the burden of proving invalidity was made heavier”) • Heightened burden overcome only 6 times. J. Michael Buchanan, “Deference Overcome,” 2006 Stan. Tech. L. Rev. 2 • Recent movement to replace the clear-and-convincing evidentiary standard with the preponderance standard for validity challenges based on prior art NOT considered by PTO Lucent v. Gateway, No. 2008-1485, -1487, -1495 (Fed. Cir. Sep. 11, 2009) Kieff, et al., “How Not to Invent a Patent Crisis” (Oct. 30, 2009)
  22. 22. 22 Past Liability & Intervening Rights • Scenario: There are amended or added claims. • Question: Has the scope of the claims changed? • If “No,” then amended/added claims – Have retroactive effect (i.e., past damages still available) – Do not give infringers intervening rights • If “Yes,” then amended/added claims – Have prospective effect only (i.e., no past damages) – Give infringers intervening rights PERIOD OF POTENTIAL DATE OF PERIOD OF POTENTIAL PAST LIABILITY REISSUANCE OR INTERVENING RIGHTS REEXAMINATION CERTIFICATE
  23. 23. Examples of Non-Scope- 23 Altering Amendments • Incorporating dependent claim into base claim – Bloom Engineering, 129 F.3d 1247 (Fed. Cir. 1997) • Replacing a word with an equivalent word – Minco v. Combustion Eng’g, 95 F.3d 1109 (Fed. Cir. 1996) • Adding explicit antecedent basis – Slimfold v. Kinkead, 810 F.2d 1113 (Fed. Cir. 1987) • Stating explicitly what was inherent – Tennant v. Hako Minuteman, 878 F.2d 1413 (Fed. Cir. 1989) – Kaufman v. Lantech, 807 F.2d 970 (Fed. Cir. 1986)
  24. 24. 24 Effects on Claim Construction • Reissue and reexamination prosecution history is intrinsic evidence relevant to the construction of disputed claims • Visto v. RIM, 2008 WL 43555837 (E.D. Tex. July 2, 2008): Court changed its claim construction based on prosecution history during reexamination that occurred after the court’s original claim construction – Original: “Smartphone” = A telephone device that integrates computing capabilities and telephone capabilities. – Revised: “Smartphone” = A device that is a thin client of limited computing power, i.e., with capabilities less than those provided by an Intel 486 processor, 6 MB of RAM, and 35 MB of storage.
  25. 25. 25 Ex Parte Reexamination
  26. 26. 26 Ex Parte Reexamination Highlights • Initiated by request for reexamination – May be filed by owner or third party or PTO Director – Must present a substantial new question of patentability (SNQP) • Handled by Central Reexamination Unit (CRU) • Ex parte prosecution – Short deadlines – No extensions of time as a right – Interviews very common – Compact prosecution with liberal after-final amendments • No broadening allowed • Claim changes can have serious consequences • Much interplay with litigation
  27. 27. 27 Typical Flow of Ex Parte Reexam Request First Office action Final Office action SNQP? Interview Interview YES Response Response Order granting reexamination NIRC Reexamination Appeal certificate
  28. 28. 28 Case Study No. 1
  29. 29. 29 Case Study No. 1 – Patent U.S. Pat. 5,575,925
  30. 30. 30 Case Study No. 1 – Claim 10. A method of installing a catch basin filter in a catch basin, the catch basin comprising: an inlet through which water and solids flow into the catch basin, an outlet through which water flows out of the catch basin, wherein the inlet is positioned above the outlet, and a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess located at the upper end, the sidewalls defining a chamber, the grate located on the top of the basin inlet and having grate sides positioned in the recesses, and the filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extending between the top and the bottom of the bag; and a flap joining the top of each sidewall, said method comprising the steps of: placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides, thereby holding the bag in place.
  31. 31. 31 Case Study No. 1 – 1st Reexams • Reexamination Nos. 90/005,603 & 90/005,652 – Requested 1999 and 2000; merged – Based on same art (Metal Era Basket)
  32. 32. 32 Case Study No. 1 – 1st Reexams • Reexamination Nos. 90/005,603 & 90/005,652 – Certificate issued 2001 – Patentability of all claims confirmed – PTO agreed with owner that Metal Era Basket did not disclose the “adjacent” limitation: “each of the bag sidewalls are adjacent to the catch basin sidewalls” – PTO accepted owner’s definition (proffered by argument only) of “adjacent” to require no intervening structure anywhere between the bag sidewalls and the catch basin sidewalls.
  33. 33. 33 Case Study No. 1 – 2nd Reexams • Reexamination Nos. 90/007,475 & 90/008,060 – Requested 2005 and 2006; merged – Based on same art (Construction site plans in city hall offices of Redmond and Bellevue, WA)
  34. 34. 34 Case Study No. 1 – 2nd Reexams • Reexamination No. 90/007,475 – Request filed 2005. Granted. SNQP raised. – First Office action rejection – Owner’s response makes 2 arguments (1) Site Plans do not qualify as prior art (2) Prior art fabric sheet is not “bag” – Submits dictionary definition – Submits declarations from PHOSITAs – Submits declaration from litigation expert witness – PTO accepts (1) and punts (2), issues NIRC
  35. 35. 35 Case Study No. 1 – 2nd Reexams • Reexamination No. 90/008,060 – Request filed 2006 – Based on same “old” art + “new light” – New light = declarations from Redmond & Bellevue city employees authenticating site plans, their public availability, and dates thereof – Request also answers owner’s substantive arguments re. “bag” – PTO grants request – Merged with prior reexam (No. 90/007,475) – Rejection reinstated; PTO says the prior art sheet has a carrying capacity and functions like a bag
  36. 36. 36 Case Study No. 1 – 2nd Reexam • Reexamination No. 90/008,060 cont’d – Owner amends claim 10 to add “preforming” step: “preforming the filter bag” – Rejection maintained and made final; PTO says the prior art sheet is preformed because it was manufactured – After final rejection • Owner’s attorney interview examiner • Owner amends “preforming” step: “preforming the filter bag by joining sidewall portions together.” – Claim allowed with that after-final amendment – Certificate issued August 2008
  37. 37. 37 Case Study No. 1 – Am. Claim 10. A method of installing a catch basin filter in a catch basin, the catch basin comprising: an inlet through which water and solids flow into the catch basin, an outlet through which water flows out of the catch basin, wherein the inlet is positioned above the outlet, and a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess located at the upper end, the sidewalls defining a chamber, the grate located on the top of the basin inlet and having grate sides positioned in the recesses, and the filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extending between the top and the bottom of the bag; and a flap joining the top of each sidewall, said method comprising the steps of: preforming the filter bag by joining sidewall portions together; placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides, thereby holding the bag in place.
  38. 38. 38 Case Study No. 1 – Litigation • Atl. Constr. Fabrics, Inc. v. MetroChem, Inc., No. C03-5645-BHS (W.D. Wash.) – Court lifts stay pending reexamination – Summary judgment of no infringement liability • No pre-certificate damages • Intervening rights for Defendant to sell off inventory – Defendant redesigns its product to have a seamless bag – Owner/Plaintiff forced to dismiss infringement count with prejudice
  39. 39. 39 Case Study No. 1 – Lessons • The (Patent Wrecking) CRU – The reason the 2nd reexam did more damage with worse art? • Authenticating evidence as new light to support a second request • “Quasi inter partes” ex parte reexamination • Merely forcing an amendment can be victory – Eliminate liability for past infringement – Intervening rights to sell of inventory – Enable design-around • Delay caused by reexamination – 3.5 years for a rather simple reexamination (no appeals)
  40. 40. 40 Case Study No. 2 40
  41. 41. 41 Case Study No. 2 • U.S. Pat. 5,195,984 – “Expandable Interluminal Graft” – Asserted in litigation: Cordis Corp. v. Medtronic AVE, Inc., 511 F.3d 1157 (Fed. Cir. 2008) – LESSON: KSR per se cannot be the “new light” to create an SNQP based on old art. 41
  42. 42. 42 Case Study No. 2 – 1st Reexam • Past Reexam (Control No. 90/007,628) – Requested July 2005; certificate issued October 2006 – Considered Palmaz, Wallace, and Charnsangavej prior art Palmaz Wallace Charnsangavej 42
  43. 43. 43 Case Study No. 2 – 1st Reexam • Patentability Confirmed – Patentability was confirmed because of lack of motivation to combine Palmaz with either Wallace or Charnsangavej – NIRC: “[O]ne of ordinary skill in the art would not have looked to the teachings of Wallace or Charnsangavej to produce the motivation to modify in a way so as to produce the flexible stent ‘chain’ of the instant invention.” 43
  44. 44. 44 Case Study No. 2 – 1st Reexam 44
  45. 45. 45 Case Study No. 2 – 2nd Reexam • Control No. 90/008,949 – Request filed December 2007 – “Reexamination of . . . claim 1 . . . is requested under 35 U.S.C. § 103(a) in view of the recent Supreme Court decision in KSR . . . based on the prior art of Palmaz in view of . . . Wallace . . . or Charnsangavej.” 45
  46. 46. 46 Case Study No. 2 – 2nd Reexam • The PTO denied the request 46
  47. 47. 47 Case Study No. 2 – 2nd Reexam • The Requester petitioned the denial • The PTO denied the petition • MPEP § 2216 now says this 47
  48. 48. Case Study No. 3 48 Translogic Transmission Gate Multiplexor S2 S1 Z 0 X I2 1 1 I1 1 0 I0
  49. 49. 49 Case Study No. 3 – Timeline District Court Federal Circuit Complaint Judgment for Vacates Patentee Request for Final Board Federal Circuit Reexam Rejection Affirms Affirms
  50. 50. 50 Case Study No. 3 – Final Decisions • In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) – Affirms PTO Board rejections – Hitachi participated at Fed. Cir. as intervenor • Translogic Tech., Inc. v. Hitachi, Ltd., 250 F. App’x 988 (Fed. Cir. 2007) (nonprec.) – Summarily vacates district court’s judgment – Bye, bye $86.5 million
  51. 51. 51 Case Study No. 3 – Variation District Court Federal Circuit Affirms; All Complaint Judgment for Appeals Patentee Exhausted Request for Final Board Federal Circuit Reexam Rejection Affirms Affirms • Ultimate victory for challenger in reexam may be too late! • How to escape final court judgment? • Seek relief from judgment under FRCP 60(b) after the fact? • Seek stay of judgment before it is executed?
  52. 52. 52 Case Study No. 3 - Lessons • Reexam is an insurance policy for defendants • The significance of a stay • The powerful differences in claim construction and burden of proof and perspective applied by the PTO and courts
  53. 53. Reissue vs. Ex Parte Reexamination 53 for Patent Owners • Reissue, unlike reexam, permits various corrections for any reason • Reissue sometimes permits claim broadening; reexam does not • Reissue is examined by the same examiner as the original patent while reexam is handled by CRU • Reissue procedures are more familiar & flexible – Reissue can be terminated by owner but reexam cannot – Reissue, unlike reexam, permits continuations, divisionals and RCEs – Reexam has short deadlines and no extensions generally available; reissue has regular deadlines and extension practice • BUT, reissue, unlike reexam, must admit existence of an error • AND reissue pendency may be longer than reexam • Reissue is generally preferred unless only possible “error” is possibly overclaiming but owner does not want to narrow claims
  54. 54. Reexamination vs. Litigation 54 for Patent Challengers • Reexamination available only if – Challenge is based on prior art printed publication – Challenge is anticipation, obviousness or double patenting • Differences – Nature of decision maker – Claim construction/interpretation – Evidentiary burdens – Claims frozen or fluid – Participation rights (at least for ex parte reexamination) – Supporting evidence that can be offered – Cost – Timing – Standing requirements – Possibly anonymity (only in ex parte reexamination)
  55. 55. 55 Inter Partes Reexamination
  56. 56. 56 Inter Partes Reexam Highlights • Requested by third party only • Available only if patent granted from application filed on or after Nov. 29, 1999 • Third party can fully participate • 50-page limit on all submissions • No interviews “on the merits” • Estoppel is matter of law
  57. 57. 57 Typical Flow of Inter Partes Reexam Request Owner Owner Response Response Requester Requester SNQP? comments comments YES Order granting ACP RAN reexamination First Office action Appeal Reexamination certificate
  58. 58. Ex Parte vs. Inter Partes 58 Third-Party Participation Ex parte Inter partes • Request • Request • Comment on every Office action and response • Appeal to Board • Participate in owner’s • Appeal to Federal Circuit if appeal at Federal requested on or after Circuit as an intervenor November 22, 2002
  59. 59. 59 Estoppel No. 1 •Applies to privies Inter Partes Inter Partes •Once Req 1 granted Reexam Request 1 Reexam Request 2 •Until Reexam 1 ends Granted. In progress
  60. 60. 60 Estoppel No. 2 •Applies to privies Inter Partes Inter Partes •Scope is “raised or Reexam Request 1 Reexam Request 2 could have raised” Failed. Claims patentable
  61. 61. 61 Estoppel No. 3 •Applies to privies Validity Inter Partes •Scope is “raised or Challenge Reexam Request could have raised” Failed. Claims upheld
  62. 62. 62 Estoppel No. 4 •Not apply to privies Inter Partes Validity •Once reexam final •Scope is “raised or Reexam Request Challenge could have raised” Failed. Claims patentable
  63. 63. 63 Ex Parte “Estoppel” Ex Parte Validity Reexam Request Challenge Failed. Claims patentable
  64. 64. Ex Parte vs. Inter Partes 64 Reexamination Differences • Availability • Participation • Estoppel? • Cost • Duration – 35.8 mo. avg. for inter partes – 25.2 mo. avg. for ex parte • Possible anonymity • Likelihood of favorable result
  65. 65. Ex Parte vs. Inter Partes 65 Results Ex Parte Inter Partes All claims All claims confirmed canceled 6% (6) All claims 11% confirmed 25% Some All claims claim Some canceled changes claim 54% (57) 40% (42) changes 64%
  66. 66. 66 For More Information Kevin B. Laurence Partner Salt Lake City, UT Bonita Springs, FL (801) 578-6932 Direct (801) 578-6999 Fax April 15-17, 2010 200 S Main Street, Suite 1100 Salt Lake City, UT 84111 kblaurence@stoel.com Matthew C. Phillips Partner Portland, OR (503) 294-9851 Direct (503) 220-2480 Fax 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 mcphillips@stoel.com
  67. 67. 67 For More Information Kevin B. Laurence Partner Salt Lake City, UT Palm Springs, CA (801) 578-6932 Direct (801) 578-6999 Fax October 3-5, 2010 200 S Main Street, Suite 1100 Salt Lake City, UT 84111 kblaurence@stoel.com Matthew C. Phillips Partner Portland, OR (503) 294-9851 Direct (503) 220-2480 Fax 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 mcphillips@stoel.com

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