Patently-O Bits and Bytes No. 315: Reexaminations

25 thoughts on “Patently-O Bits and Bytes No. 315: Reexaminations”

1. 25

   I have spent a great deal of time thinking about this issue. I don’t know if there is any one, ideal solution. But, I would recommend at least the following:

   1) Identify ex parte reexamination requestors and limit their opportunity to file requests to just once.

   2) Do away with BRI and require the PTO to follow the court construction of the claims to the extent a court construction is final.

   3) Presumptively allow past damages after an amendment to a claim, but allow a court to adjust the damages according to the equities of the case as is now done in the case of intervening rights. The greater significance of the limitations could be balanced against the reliance of the infringer. Here presumption of validity would be given teeth, and the only acceptable reliance interest would be an attempt to design around.

   Finally, permit reexaminations only by request of, or with the consent of, the patent owner.
2. 24

   MaxDrei,

   I’m not sure that your point was that it’s up to the courts to set the Rules. My comment was directed to your stated point of where the need for reform is the greatest.

   I do appreciate the additional post showing that you are trying to use your critical faculties.
3. 23

   Scott, in theory, you are absolutely correct.

   In application, the landscape look a considerably different.
4. 22

   Noise, up pops the “900+” references posting from our esteemed host. Don’t you think that’s a nice example of my point, that it’s up to the courts to set the Rules?
5. 21

   Noise, I don’t deny that quality at the PTO must improve, but how to implement that worthy objective, that’s the problem. I had in mind for the PTO end of the business that the challenge is to turn the present vicious circle, spiralling downward into more and more virulent abuse of the other side, into a virtuous circle in which Examiners and attorneys share a common self-interest in getting to issue patents that will withstand scrutiny post-issue. In Europe, ordinary inexperienced junior EPO Examiners find that a high proportion of their time is taken up in trying post-issue oppositions and revoking patents which they themselves have issued. Sitting in judgement on a patent, and being dissatisfied with the antics of counsel on both sides, and being forced to choose the lesser of two ewils, makes them better, wiser, more experienced examiners.

   I am thinking that the most effective way to get a virtuous spiral at the USPTO would be to reform patent litigation.
6. 20

   MaxDrei,

   In your now-familiar style, you throw an opinion on a system you do not fully understand, flavored with the “my-glasses-work-for-me-they-should-work-just-fine-for-you” mindset.

   The percentage of patents that reach litigation is very small.

   Your endpoint in logic above:

   “7. In other words, post-issue is where the need for reform is greatest. The focus on the broken PTO is a diversion to the real issue”

   Couldn’t be farther from the truth.

   The real issue, plain and simple, is that examination quality must be improved. It is not to be dodged by rubber stamping (NEITHER reject-reject-reject NOR accept-accept-accept). Nor is it to be resolved by shifting the burden onto the applicants (as the ILLEGAL continuation rules attempted to do).

   Frankly, it is hard work. It is a job that calls for professionalism (I am still outraged by the Just A Patent Examiner thread – curious that you have not offered an opinion on that…). The treatment of applicants like cattle and the examiners like drones processing production widgets needs to be scrapped.

   Your focus on a small subset end product, while impportant in its own right, is clearly NOT the area in greatest need of reform.
7. 19

   try validity simultaneously with infringement, quickly and expertly,

   See, there’s your problem right there.

   It’s generally in one party’s interest to drag the case out as long as possible, and that party will generally find a way to do it. Unless…

   Make the loser pay the winner’s costs.

   Now I think you’re on to something.
8. 18

   Thoughts:

   1. In an orderly patent system, the patent right is the right to exclude, rather than a right to bankrupt the Defendant.

   2. Trouble is, the court has no appetite to enjoin, when the claim is grotesquely lacking in patentability and that particular remedy is disproportionate.

   3. So it hands down the eBay Decision.

   4. Two wrongs don’t make a right, so

   5. Equip the system with a means to try validity simultaneously with infringement, quickly and expertly, and enjoin only those who are infringing claims that survive full-blown validity attacks judged on the preponderance of evidence. Make the loser pay the winner’s costs.

   6. Then nobody’s going to get too excited about back damages.

   7. In other words, post-issue is where the need for reform is greatest. The focus on the broken PTO is a diversion to the real issue. Get Paul Michel to reform the patent litigation landscape.
9. 17

   Bad Joke,

   The standard for intervening rights is whether or not the claims are “substantially identical.” Your position that ANY change causes intervening rights is incorrect.
10. 16

    Ned, Max, you’re both right. With this “any change voids past damages” stuff, you just need to force ANY change in reexam in order to negate all past damages. This guts patent protection worse than any substative rule that even Dudas proposed. We need some kind of reasonableness standard that asks, “Was the point of novelty clear before the amedments in reexam, and did the alleged infringer’s product encompass that point and otherwise infringe the claim?”

    If infringement is found, and the point of novelty was always clear, we should have some mechanism for negating the gutting effect of changing “plurality of widgets…” to “a first widget and a second widget…”. Those sylistic amendments do not affect the meat of the claim, and they shouldn’t destroy an infringement action.
11. 15

    Ned, in principle, yes, although I would not want readers to run away with the idea that a claim to everything under the sun will be effective to pull in damages for every infringing act from the day of publication of the WO. In particular, claim amendments made during prosecution at the EPO might restrict the quantum of damages you can get after issue, in respect of “infringing” acts committed prior to the date of the prosecution amendment.

    Then there’s the practical difficulty, in Europe, of amending the patent after issue. But that’s another story for another day.
12. 14

    Preacher, an alternative is simple: by statute, do not void past damages wrt narrowed claims. This actually is the prevailing law in Europe.
13. 13

    6 – nicely done, top scorer!

    link to abovethelaw.com
14. 12

    BRI works against the applicant/patentee wherever it is raised by increasing the scope of potential prior art. I don’t understand’s Sterne’s proposed alternative (there isn’t one). It is not remarkable that BRI used for examination (works against applicant) is different from claim construction for the purposes of infringement analysis.

    The BRI thesis is underdeveloped IMO.
15. 11

    I wonder why there was no comment by Dennis on Section C, beginning on page 9 of Sterne’s paper. It points out the numerous problems with BRI during reexaminations and predicts that BRI is ripe for challenge.

    This would essentially require an en banc case to overturn a panel decision, In re Yamamoto link to openjurist.org.

    As I said earlier, the Commissioner said there would be an announcement on the topic soon.
16. 10

    Mooney applies the baboon theory of examination. He makes a few perfunctory grunts, and then, the inevitable “this is crap.”

    Who could have predicted that?

    Answer – anyone.
17. 9

    Evidently it takes 5 prosecutors to interview a case at a top flight firm like “Hershkovitz & Associates”

    That’s what happens when you do patent prosecution on a litigation budget.
18. 8

    The “special dispatch” doesn’t explicitly mean fast. Giving the term its broadest reasonable construction and read in light of the party intended to implement i.p. reexams, “special dispatch” means glacial speed.
19. 7

    Mooney is referencing the Fotomedia patent reexaminations. link to patentspostgrant.com

    If you want to get a laugh, read the last page of the interview summary of 5/22/09. Evidently it takes 5 prosecutors to interview a case at a top flight firm like “Hershkovitz & Associates” ROTFL
20. 6

    Rich,

    Mooney thinks nothing is patentable. 99% of claims are facially “crap” and no actual examination of them is required. So, when he sees rejections, he is happy and all is good with the world.
21. 5

    Last week, in Seattle, the Commissioner was asked about the problem caused by the use of BRI in reexaminations, (it caused amendments to be made that would be unnecessary under a “proper” construction), that defendants knew this, and were invoking reexaminations to do away with past damages.

    He said, they were aware of the problem and the PTO would be issuing a statement (not exactly sure about this) in about a month.
22. 4

    Malcolm Mooney, what do you mean?
23. 3

    Does Obama’s proposed spending freeze include the Patent Office?
24. 2

    Thanks for sharing, very informative.
25. 1

    I looked up the reexamination (No. 90/010,143) and found that the PTO has issued a final rejection about half of the patented claims.
    

    Nobody could have predicted …

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