The Rising Stature of Reexaminations (Meet in St. Louis)

WulogoOn Thursday, March 4, 2010, 12:00 noon – 1:00 pm, I will be speaking at the Washington University Law School (Room 305 in Anheuser-Busch Hall) on the topic of patent reexaminations. The talk will be primarily directed toward IP-focused law students and faculty. However, the law school has offered to open its doors to folks from the community (free). Last year, several local patent attorneys attended when I spoke about design patent law and their comments really enriched the program. I look forward to meeting you there!

The title of my talk this year is “the rising stature of patent reexaminations.” That title reflects the reality that reexamination filing has become a default strategy for accused patent infringers.  We will talk about recent statistics involving reexamination quality and timeliness as well as “success rates” (AKA “kill rates”).  Most patents undergoing reexamination are also simultenously involved in patent infringement litigation. Those parallels actions create unique and sometimes problematic cross-links that we will discuss.  The final topic will involve potential reexamination reforms that could further improve (or ruin) the process.

Send questions about the event to MPCooper [at] wulaw.wustl.edu.

33 thoughts on “The Rising Stature of Reexaminations (Meet in St. Louis)

  1. 33

    The patent system is under attack. It is clear, Dennis that you have chosen sides in this war

    And this blog is like a huge virtual missile, just ready to blast off and annhiliate the enemy!!!!!! The only question is: who gets to ride on it like Slim Pickens in DR STRANGELOVE?

  2. 32

    “The patent system is under attack. It is clear, Dennis that you have chosen sides in this war.”

    Being a tad overdramatic, aren’t we?

  3. 31

    There are certainly some things that could be improved about the way the PTO handles reexaminations.

    But as for the opposition system [post-grant-review provisions] in the pending U.S. patent reform legislation, I believe that has been so significantly watered down as to be infrequently usable. In particular, it will only be available for a short time period after a patent issues. I did a brief study of litigated patents that indicated that relatively few patents that newly issued are sued on. [One reason may be that an already-allegedly-infringing product may actually be 102(g) prior art, unless the patent was a long-pending “submarine.” The vast majority of patent suits are against products that did not even exist until long after the patent issued.
    Also, the proposed new post-grant-review proceeding will be considerably more expensive and dangerous than an ex parte reexamination. Thus unlikely to be used unless one is actually being threatened by a newly issued patent, and capable of making a fast decision.
    [Analogies to the EPO opposition system are false in several respects.]

  4. 30

    I find this quite interesting, because I had no idea that one could dispose of unwanted arguments by calling the opposition a “baboon.”

    While I can understand that having to face the government might be seen as unfair, you had to do that to get the patent in the first place (i.e. by overcoming the examiner’s objections). I therefore remain unconvinced that the mere fact that you have to explain to the government why you are the one who actually invented the thing patented is “unfair.” At worst, you’re out the time required for reexamination (assuming you correctly examined the prior art to make sure that you are the inventor you claim to be).

    And besides, I thought that choice venues like EDT didn’t bother to issue stays for reexamination. So I’m just not seeing how terribly unfair it is. I can see how it would throw a monkey wrench into plans to license a weak patent, but I don’t see how those weak patents help science progress (which is, if you recall, the actual reason we have patents–money is neither a proxy for progress, nor a direct concern of the patent system as written into the Constitution).

  5. 29

    >>Grow up, Martin

    I don’t mind so much being called Martin, but I think that Martin may mind you associating me–someone he is not–with him.

    So, baboon, if you’re going to name call back at least pick something that isn’t going to hurt a third party.

  6. 27

    Only if read by a baboon.

    Grow up, Martin. There are enough embarassing elderly people on earth already.

  7. 26

    Only if read by a baboon.

    If the PTO reasonably thinks the applicant is not entitled to a patent, should the applicant not have to answer to that?

    The third party chose a forum where he doesn’t incur costs, but also doesn’t get to make representations in his favor. That can be a pretty big risk, unless you very strongly believe in the PTO’s reject, reject, reject mentality and that BRI construes every claim as “a device”.

    Oook.

  8. 25

    MM said: >>Nothing in your paragraph suggests that there >>is any “unfairness”,

    Only if read by a baboon.

  9. 24

    Ned: Reexaminations are horribly expensive to the patent owner. It is the patent owner verses the government, not the patent owner vs. the infringer. This is not fair.

    Nothing in your paragraph suggests that there is any “unfairness”, Ned. So why draw this conclusion?

  10. 22

    Paul, I do not disagree with these points.

    However, the Office has a habit of granting every request. There is No serious filter. This, combined with the reality that patents being reexamined are not respected forces litigation where otherwise licensing would have been practicable.

    While reexaminations are not as expensive as litigation, they are Very expensive. But the expenses are almost all borne by only one party -the patent owner. (At least with ex parte.)

    To make reexamination work we need a couple reforms. First, eliminate BRI. Second, allow the patent owner to respond to the request to point out that no substantial new question exists. Have this issue subject to review by the BPAI on an expedited basis. We need to STOP, frivolous reexaminations. Third, we need requestors to identify themselves to prevent abuse. Finally, we need statutory time limits on PTO action.

  11. 21

    Re: ..”patents can be kept in reexamination forever by serial requests, each request citing “new” art, which can by statute be “old” art, and each one resulting in an “extended,” lengthy and very expensive proceeding of patent owner vs. the government. For this entire period of time the patent remains largely unenforceable except through litigation”

    ? “Through litigation” is the only way patents have ever been enforceable.
    Most judges will not provide litigation stays for belated reexaminations, or will not provide stays ll in view of known PTO reexamination delays. Nor is it likely that judges will look kindly on defendants caught deliberately using such serial piecemeal reexaminations to delay patent enforcement.
    Also, why don’t patent owners with excessively delayed reexaminations file Administrative Proceedure Act suits against the PTO? Especially given the PTO’s statutory “special dispatch” violations?
    How can the very limited number and limited time periods for responses in a PRE-litigation reexamination [and no discovery, depositions or cross-examination] be even comparable in COST to patent litigation?

  12. 20

    Paul posits “a” reexamination of a patent as if the public were limited to only one reexamination and as if a reexamination per se did not cause the patent owner harm. But, what actually happens is that patents can be kept in reexamination forever by serial requests, each request citing “new” art, which can by statute be “old” art, and each one resulting in an “extended,” lengthy and very expensive proceeding of patent owner vs. the government. For this entire period of time the patent remains largely unenforceable except through litigation, but even then courts are increasingly entering stays.

    But the capper is BRI, which causes the claims to have some wild and uncertain construction, specifically designed to read on prior art. This is abusive in the extreme, and has to be stopped, either by the courts or by congress.

    But BRI is the very reason for the sudden popularity of reexaminations — that and the crushing expense imposed on the patent owner by design.

  13. 19

    IANAE: “‘But now oppositions are trumpeted as the next savior of the systems by those who know otherwise and who fully intend to use oppositions to crush upstarts who might attempt to obtain a patent in their domain.’

    Suppose I agree that it shouldn’t be prohibitively expensive (or take too much time) to obtain a patent and enforce it in court.

    Suppose also that I don’t like the idea of patents issuing without the examiner seeing the best art, since a presumed-valid invalid patent gives undue leverage in licensing negotiations, is expensive to invalidate in court, and has such a high evidentiary standard to invalidate that I can be held liable for infringing a patent that is probably invalid.

    Suppose also that large companies in the field with extensive R&D tend to have the best art.

    What can I do to change the system without Destroying America?”

    I would bifurcate trials and try validity and infringement separately from damages. I further would allow a court to rule on validity as a “matter of law” on summary judgment if the only art relied upon was published.

    Reexaminations are horribly expensive to the patent owner. It is the patent owner verses the government, not the patent owner vs. the infringer. This is not fair.

    Further, when in the patent office, the rule of claim construction is BRI. This per se is harmful to the patent owner. BRI is intollerable and grossly unjust to patentees for the many reasons I previously stated. For this reason as well, reexaminations need to be abolished.

    Voluntary reissues remain to fix defective patents.

  14. 18

    Re the position that “someone with few resources will never be on an level field with those who have many resources” [for getting money for their patents from infringers].
    That has certainly been true in a number of notorius cases in the past. However, I have never seen in 47 years more available money and legal assistance for “small inventors” than we have right now, from all the troll companies and contingent fee patent litigation attorneys and venture capital firms that did not exist back then.
    Furthermore, the sheer volume and complexity of prior art has expanded vastly more than application examination time has, not surprisingly leading to more legitimate patent validity challenges.
    It is simply not realistic or reasonable to expect companies to spend thousands of dollars per patent application in hundreds of thousands of applications per year to provide better prior art searches of all possibly future relevant claims of other peoples pending patent applications. Reexamination of the relatively few patents ever asserted is the only practical solution.

  15. 17

    Ned: My solution would be to cut the patent system down to a nub. If you think that someone with few resources will ever be on an level field with those who have many resources, you need to study game theory (a branch of mathematics). You’d have to limit all the resources people can bring to bear in court, which would mean things like everyone getting a random lawyer (equalize skill), limited number of billable hours, etc. In short, it would mean lots of unworkable limitations.

    As for what I mean by cutting back the patent system, I’m thinking of things like no patents on math (AKA software; read up on the Curry-Howard correspondence), obviousness standard more meaningful (e.g. just have to show that a skilled practitioner could combine the existing references to get the claimed invention), examiners given more time so they don’t miss stuff found in 5 minutes with Google, more public review (already happening to some extent), ditch some of the crazy requirements that contort how applications must be worded (no more gigantic, run-on sentences), etc.

  16. 16

    “http://thepriorart.typepad.com/the_prior_art/2010/02/greg-girard-esn-v-cisco-inventor-arrested-on-weapons-charges.html”

    You see guys, the reason we need trolls is so that companies like Cisco can be shaken down to fund nutcases preparations for armageddon with guns, explosives, knives, food, body armor etc.

    In fact:

    “George McAndrews, a founding partner of McAndrews, Held & Malloy and one of the lawyers representing ESN in the suit against Cisco, praised Girard in a letter to Cisco general counsel Mark Chandler: “Mr. Girard is exactly what the founding fathers had in mind when they penned the Patent Clause in the basic Article I of the U.S. Constitution.””

    Oh and for epic lols, read the last line of that link above in context.

  17. 15

    and a fair job of putting your bias aside

    Thanks. You know how hard that is for me.

    Make it public and accessable to the examiner.

    Great. We need a procedure for it, though. Gotta make sure the examiner sees it and has a proper understanding of it. Getting it on the cover of the patent without the examiner properly considering it is the worst case scenario for a possible infringer.

    Focus on the word PROMOTE.

    I can’t focus on that one word without also focusing on what exactly we’re trying to promote. Anyway, I don’t think anyone is against promoting the useful arts. We only disagree on how best to do it.

  18. 14

    Good question IANAE (and a fair job of putting your bias aside – see I too can be nice).

    One answer, of course actually underway, is to share this best art. Make it public and accessable to the examiner.

    Suppose though, that the large company doesn’t want to share. This is a perfectly valid position, as the items shared may have been developed at some cost and hold some value by keeping the public unaware of its existence.

    Take a step back and think about the mandate of the patent system in just such a scenario.

    Focus on the word PROMOTE.

    The choice of NOT sharing has its due consequence. Or do you think this basic principle of the patent system is not desirable?

  19. 13

    But now oppositions are trumpeted as the next savior of the systems by those who know otherwise and who fully intend to use oppositions to crush upstarts who might attempt to obtain a patent in their domain.

    Suppose I agree that it shouldn’t be prohibitively expensive (or take too much time) to obtain a patent and enforce it in court.

    Suppose also that I don’t like the idea of patents issuing without the examiner seeing the best art, since a presumed-valid invalid patent gives undue leverage in licensing negotiations, is expensive to invalidate in court, and has such a high evidentiary standard to invalidate that I can be held liable for infringing a patent that is probably invalid.

    Suppose also that large companies in the field with extensive R&D tend to have the best art.

    What can I do to change the system without Destroying America?

  20. 12

    Moe, if you have followed any of my arguments about the reexamination system over the past year, you can see just how the reexamination system is now harming the patent system where the intention was the opposite. But there is a “war” ongoing, between big business and the little guy about the fundamentals of the patent system. It is mostly embodied in the pending patent bill where FTI is under attack. That legislation also adds oppositions, restricts damages and does other tweaks that as a whole erode the value of patents.

    Did you know that in the early 40’s Congress junked the idea of oppositions because they realized that the small inventor could not afford them? They considered appointing public defenders to represent the impecunious, but the whole concept was dumped. But now oppositions are trumpeted as the next savior of the systems by those who know otherwise and who fully intend to use oppositions to crush upstarts who might attempt to obtain a patent in their domain.

  21. 11

    MaxDrei, we have discussed before how the FTF system favors big companies before. But oppositions and nullity actions also favor the big guy, especially where one enforcement action can result in numbers of nullity actions, all of which are expensive.

    Patents that are expensive to obtain in the first place, but ungodly expensive to enforce, do not exist in a domain at all friendly to the small inventor or startuup business.

  22. 10

    rising stature means that the current stature is so low that there is only one direction possible

  23. 7

    I’m sure that by “rising stature” Dennis meant more frequent and more prominent use or growth [which is certainly true] and not necessarily an improved view of the PTO’s undiligent handling of reexaminations, which even many of its proponents are justly upset with.

  24. 6

    You know something. Whenever I see a sentence that includes in it a word like “surely” “apparently” “seems to be” I suspect the worst.

    Another example immediately above, which I reproduce below.

    “The European system is clearly rigged against the little guy”

    Evidence Ned? Any evidence (bearing in mind that 95% of patent disputes settle before trial, at least in England) of the serious allegation against the Rule of Law in Europe that you are making?

    Or is it your position that the Patent Office is infallible?

  25. 4

    “Rising stature?” “Growing menace” would be more apt.

    Our biases are apparent.

    Dennis, you might want to compare the US system to Europe where recent enforcement actions by American patentees have been met with revocation proceedings across Europe, with many different claim constructions and results. The situation is so deplorable, that patents are practically unenforceable in Europe by anyone other than a deep pockets owner.

    The European system is clearly rigged against the little guy, and the American system increasingly so. We are trending back to the “good old days” where the likes of Eli Whitney became so disgusted with the lack of enforceability of patents that he didn’t even file patent applications on his most important inventions.

    The patent system is under attack. It is clear, Dennis that you have chosen sides in this war.

  26. 3

    A very timely topic: In a post-KSR + recession economy, a slow rusting away of a budgeted defensive war chest looks a bit better than a flash fire inside the chest with the lid closed (sort of like Microsoft viewing i4i in hindsight). Recommendation: Perhaps the next time something like this seminar is done in Anheuser-Busch Hall, InBev could sponsor a Stella Artios or Beck’s webinar format for those of us that already have part of that day booked in another part of the country. Cheers.

  27. 2

    Glad to see you doing CLE on reexaminations Dennis. It needs it.
    I think this article is still worth citing for them, but of course I’m biased:
    “Reexamination versus Litigation – Making Intelligent Decisions in Challenging Patent Validity” by Paul F. Morgan and [former Chief APJ] Bruce Stoner, Journal of the Patent and Trademark Office Society (JPTOS) June 2004, Vol. 86, No. 6, pp, 441-463.

  28. 1

    Speaking of cross-links, Dennis what do you think happens to a reexamination if a co-pending litigation is dismissed with prejudice? Must it be finished pursuant to section 317?

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