DOCSLIB.ORG

Interplay of Markman Hearing Claim Construction and PTO Claim Construction During Reexamination and Concurrent Litigation

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Interplay of Markman Hearing Claim Construction and PTO Claim Construction During Reexamination and Concurrent Litigation THE UNIVERSITY OF TEXAS SCHOOL OF LAW 6TH ANNUAL ADVANCED PATENT LAW INSTITUTE Interplay of Markman Hearing Claim Construction and PTO Claim Construction During Reexamination And Concurrent Litigation January 20 – 21, 2011 Alexandria, Virginia Kenneth R. Adamo* JONES DAY North Point 901 Lakeside Avenue Cleveland, Ohio 44114-1116 (216) 586-7120 2727 N. Harwood Street Dallas, Texas 75201 (214) 969-4856 E-mail: kradamo @ jonesday.com * Member Illinois, New York, Ohio and Texas Bars. This paper reflects only the present considerations and views of the authors, which should not be attributed to Jones Day, or to any of their or its clients (former, present or future). © 2011 Kenneth R. Adamo. All Rights Reserved. INTRODUCTION When concurrent, parallel-in-time reexamination proceedings and patent infringement litigation is ongoing, the effects of claim construction occurring during the reexamination proceeding on the litigation, and a Markman/Phillips ruling/decision in the litigation on the reexamination proceeding, may require consideration. A claim construction in the reexamination proceeding in the PTO is part of the prosecution history; as such, it is intrinsic evidence which Phillips requires be considered by the trial court during the Markman/Phillips construction process, irrespective of the other differences between patent reexamination and the litigation process (burdens of proof and the like). Timing issues might, however, present challenges to efficient consideration in a particular case. A trial court claim construction through Markman as applied per Phillips is not binding in the reexamination proceeding. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Lack of “binding” effect, however, does not end the inquiry, nor demarcate what consideration the PTO may/should give that Markman/Phillips ruling/decision in the reexamination proceedings. REEXAMINATION BASICS To ground the pertinent discussion, a review in summary of certain inter partes and ex parte reexamination issues is informative. INTER PARTES REEXAMINATION AND LITIGATION In discussing the policies implicated in deciding whether a substantial new question of patentability exists in an inter partes reexamination context, MPEP 2642 states: III. POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT. As to A – C which follow, see Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). CLI-1869578v1 A. Final Holding of Validity by the Courts. When the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present, because of the different standards of proof employed by the Federal District courts and the Office While the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court's decision on validity, because it is not controlling on the Office MPEP 2600-51 to -52 (Rev. 7, July 2008) (emphasis added). Where inter partes reexamination proceedings are concurrent, parallel-in-time with litigation, MPEP 2686.04 sets out the PTO procedures at that interface: IV. FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding must promptly notify the Office of any Federal Court decision involving the patent. Upon the issuance of a holding of claim invalidity or unenforceability by a Federal Court, reexamination of those claims will continue in the Office until the decision becomes final. A non-final Court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding. Where an inter partes reexamination proceeding is currently pending and a final Federal Court decision issues after all appeals, the reexamination proceeding is reviewed to see if no substantial new question of patentability remains (as to one or more claims) due to holding of claims invalid, and to determine whether the provisions of 37 CFR 1.907(b) apply as a result of a decision in a civil action arising in whole or in part under 28 U.S.C. 1338. A final Court holding of invalidity/unenforceability is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the CLI-1869578v1 2.
Load more

Recommended publications
  • MPEP Identifying and Evaluating Each Claim Limitation
    Chapter 2100 Patentability 2101 [Reserved] 2121.03 Plant Genetics Ð What Constitutes -2102 Enabling Prior Art 2103 Patent Examination Process 2121.04 Apparatus and Articles Ð What 2104 Patentable Subject Matter Constitutes Enabling Prior Art 2105 Patentable Subject Matter Ð Living 2122 Discussion of Utility in the Prior Art Subject Matter 2123 Rejection Over Prior Art's Broad 2106 Patent Subject Matter Eligibility Disclosure Instead of Preferred 2106.01 [Reserved] Embodiments 2107 Guidelines for Examination of 2124 Exception to the Rule That the Critical Applications for Compliance with the Reference Date Must Precede the Filing Utility Requirement Date 2107.01 General Principles Governing Utility 2124.01 Tax Strategies Deemed Within the Rejections Prior Art 2107.02 Procedural Considerations Related to 2125 Drawings as Prior Art Rejections for Lack of Utility 2126 Availability of a Document as a 2107.03 Special Considerations for Asserted ªPatentº for Purposes of Rejection Therapeutic or Pharmacological Under 35 U.S.C. 102(a) or Pre-AIA 35 Utilities U.S.C. 102(a), (b), and (d) 2108 [Reserved] 2126.01 Date of Availability of a Patent as a -2110 Reference 2111 Claim Interpretation; Broadest 2126.02 Scope of Reference's Disclosure Reasonable Interpretation Which Can Be Used to Reject Claims 2111.01 Plain Meaning When the Reference Is a ªPatentº but 2111.02 Effect of Preamble Not a ªPublicationº 2111.03 Transitional Phrases 2127 Domestic and Foreign Patent 2111.04 ªAdapted to,º ªAdapted for,º Applications as Prior Art ªWherein,º and ªWherebyº Clauses 2128 ªPrinted Publicationsº as Prior Art 2111.05 Functional and Nonfunctional 2128.01 Level of Public Accessibility Descriptive Material Required 2112 Requirements of Rejection Based on 2128.02 Date Publication Is Available as a Inherency; Burden of Proof Reference 2112.01 Composition, Product, and Apparatus 2129 Admissions as Prior Art Claims 2130 [Reserved] 2112.02 Process Claims 2131 Anticipation Ð Application of 35 U.S.C.
    [Show full text]
  • Patents and the Public Domain: Improving Patent Quality Upon Reexamination
    Patents and the Public Domain: Improving Patent Quality Upon Reexamination Prepared by Policy Intern Raeanne Young [email protected] May 2008 ELECTRONIC FRONTIER FOUNDATION eff.org Table of Contents EXECUTIVE SUMMARY ........................................................................................................................3 PATENTS AND THE PUBLIC DOMAIN .....................................................................................................4 The Problem With Patent Quality ..................................................................................................4 Policy Rationale: Encouraging Innovation .......................................................................................4 PATENT REEXAMINATION ...................................................................................................................6 Ex parte and Inter partes .............................................................................................................6 OVERALL REEXAMINATION TRENDS ......................................................................................................8 Ex Parte Reexamination Filing Data: July , 98 - December 3, 2007 ...............................................8 Inter Partes Reexamination Filing Data: November 29, 999 - December 3, 2007 .............................0 Comparison of Ex Parte and Inter Partes ......................................................................................0 PROMOTING FAIRNESS IN THE PATENT SYSTEM THROUGH REEXAMINATION .............................................2
    [Show full text]
  • In the United States District Court for the District of Delaware
    IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE SHURE INCORPORATED and ) SHURE ACQUISITION HOLDINGS, INC., ) ) Plaintiffs, ) ) v. ) Civil Action No. 19-1343-RGA-CJB ) CLEARONE, INC., ) ) Defendant. ) REPORT AND RECOMMENDATION In this action filed by Plaintiffs Shure, Inc. and Shure Acquisition Holdings, Inc. (collectively “Plaintiffs” or “Shure”) against Defendant ClearOne, Inc. (“Defendant” or “ClearOne”), presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the construction set forth below. I. BACKGROUND Shure and ClearOne are competitors in the installed audio-conferencing market. (D.I. 64 at ¶¶ 14-15; see also D.I. 22 at 1; D.I. 40 at 1) On July 18, 2019, Shure filed the instant action against ClearOne in this Court. (D.I. 1)1 On November 19, 2019, Shure filed the operative Second Amended Complaint (“SAC”), in which it first asserted the patent at issue in this Report and Recommendation, United States Design Patent No. D865,723 (the “'723 patent”). (D.I. 64) The '723 patent is entitled “Array Microphone Assembly” and it issued on November 5, 2019. (D.I. 239, ex. 1 (hereinafter, “'723 patent”)) It is a continuation of a parent application filed on April 30, 2015, which matured into U.S. Patent No. 9,565,493 (the “'493 patent”). (Id. 1 The parties have also been involved in litigation against each other in the United States District Court for the Northern District of Illinois since April 2017. (See D.I. 155 at 2-3) at 1-2; id., ex. 4 at 1 (hereinafter, “'493 patent”))2 Further details concerning the '723 patent will be addressed below in Section III.
    [Show full text]
  • The “Article of Manufacture” Today
    Harvard Journal of Law & Technology Volume 31, Number 2 Spring 2018 THE “ARTICLE OF MANUFACTURE” TODAY Sarah Burstein* TABLE OF CONTENTS I. INTRODUCTION .............................................................................. 782 II. BACKGROUND .............................................................................. 785 A. Design Patentable Subject Matter ............................................ 785 B. Design Patent Claiming & Infringement ................................. 786 C. Remedies for Design Patent Infringement ............................... 788 III. WHAT IS THE “ARTICLE OF MANUFACTURE” IN § 289?.............. 789 A. The Apple/Nordock Rule .......................................................... 791 B. The Supreme Court Weighs In ................................................. 791 IV. WHY COURTS SHOULD NOT ADOPT THE GOVERNMENT’S APPROACH .................................................................................... 793 A. The Test .................................................................................... 794 1. The Underlying Premise ........................................................ 795 2. The Factors ............................................................................ 797 B. The Nature of the Inquiry ......................................................... 802 1. A Case-by-Case Inquiry? ...................................................... 802 2. Is it a Question of Fact or Law? ............................................ 807 C. The Burden of Proof................................................................
    [Show full text]
  • United States District Court Middle District of Tennessee Nashville Division
    UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF TENNESSEE NASHVILLE DIVISION TUITIONFUND, LLC, ) ) Plaintiff, ) ) v. ) No. 3:11-00069 ) Judge Sharp SUNTRUST BANKS, INC. et al., ) ) Defendants. ) ORDER Pending before the Court is a Motion to Stay Pending Inter Partes Reexamination (Docket No. 207) filed by Defendants SunTrust Banks, Inc., SunTrust Bank, Vesdia Corporation, and Cartera Commerce, Inc. (collectively the “Vesdia Defendants”), to which Plaintiff Tuitionfund LLC has responded in opposition (Docket No. 211). The Court heard oral arguments on the motion on September 24, 2012, after which the Vesdia Defendants filed a Sealed Supplement Brief in further support of their request for a stay. For the following reasons, the Motion to Stay will be denied. In a related case, TuitionFund LLC v. First Horizon Nat’l Corp. et al., No. 3:11-0852 (“First Horizon”), the Court was presented with a similar request for a stay pending reexamination of the patents in suit. In denying the request, the Court wrote: In determining whether to exercise its discretion to impose a stay pending the USPTO’s reexamination, Courts primarily consider three factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.” Protective Indus., Inc. v. Ratermann Mfg., Inc., No. 3:10-1033, 2010 WL 5391525 at *2 (M.D. Tenn. Dec. 22, 2010) (internal quotation marks omitted) (quoting Lincoln Electric v. Miller Electric Mfg.
    [Show full text]
  • In the United States District Court for the District of Kansas
    Case 6:17-cv-01217-EFM-ADM Document 37 Filed 02/13/19 Page 1 of 8 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS LOGANTREE LP, Plaintiff, vs. Case No. 17-1217-EFM-KGS GARMIN INTERNATIONAL, INC. and GARMIN USA, INC., Defendants. MEMORANDUM AND ORDER Defendants Garmin International, Inc., and Garmin USA, Inc. (collectively “Garmin”) move this Court for a stay pending inter partes review (“IPR”) of the patent in suit. In addition, Garmin moves the Court for an intra-district transfer for trial to Kanas City, Kansas. As explained below, the Court grants Garmin’s motion to stay the case until the Patent Trial and Appeal Board (“PTAB”) issues its decisions regarding Garmin’s IPRs. Furthermore, because the PTAB’s decision could simplify the issues in the case such that Plaintiff LoganTree LP no longer has a claim for infringement, the Court denies Garmin’s motion for intra-district transfer for trial without prejudice. I. Factual and Procedural Background Plaintiff LoganTree LP filed this patent infringement suit on August 23, 2017, alleging that Garmin’s accelerometer-based activity trackers infringe its U.S. Patent No. 6,059,576 (the Case 6:17-cv-01217-EFM-ADM Document 37 Filed 02/13/19 Page 2 of 8 ‘576 Patent). In February 2018, Garmin filed two petitions for IPR with the PTAB covering 52 of the 185 claims of the ‘576 Patent. LoganTree did not file a Patent Owner Preliminary Response, and on August 30, 2018, the PTAB instituted the IPRs on all grounds. The PTAB is expected to complete the proceedings and issue its final decisions by August 30, 2019.
    [Show full text]
  • Journal of Legal Technology Risk Management
    THIRD CIRCUIT USES PROCEDURAL GROUNDS i JOURNAL OF LEGAL TECHNOLOGY RISK MANAGEMENT 1. THIRD CIRCUIT USES PROCEDURAL GROUNDS TO REJECT FCC’S WEAKENING OF MEDIA CROSS-OWNERSHIP RULES FOR A SECOND TIME IN PROMETHEUS RADIO PROJECT V. FCC 2. WHEN PARALLEL TRACKS CROSS: APPLICATION OF THE NEW INSIDER TRADING REGULATIONS UNDER DODD-FRANK DERAILS 3. ELECTRONIC DISCOVERY AND THE CONSTITUTION: INACCESSIBLE JUSTICE 4. RENEWING THE BAYH-DOLE ACT AS A DEFAULT RULE IN THE WAKE OF STANFORD V. ROCHE Volume 6 | Summer 2012 | Issue 1 (c) 2006-2012 Journal of Legal Technology Risk Management. All Rights Reserved. ISSN 1932-5584 (Print) | ISSN 1932-5592 (Online) | ISSN 1932-5606 (CD-ROM) www.ltrm.org II J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 Editor-in-Chief Daniel B. Garrie, Esq. (USA) Guest Editor Kelly Merkel, Esq. (USA) Publications Editor Candice M. Lang, Esq. (USA) Executive Editors Matthew Armstrong, Esq. (USA) Dr. Sylvia Mercado Kierkegaard (Denmark) Scientific Council Stephanie A. “Tess” Blair, Esq. (USA) Hon. Amir Ali Majid (UK) Hon. Maureen Duffy-Lewis (USA) Micah Lemonik (USA) Andres Guadamuz (UK ) Carlos Rohrmann, Esq. (Brazil) Camille Andrews, Esq. (USA) Gary T. Marx (USA) William Burdett (USA) Eric A. Capriloi (France) Donald P. Harris (USA) Hon. Justice Ivor Archie (Trinidad & Tobago) ii Members Janet Coppins (USA) Eleni Kosta (Belgium) Dr. Paolo Balboni (Italy) Salvatore Scibetta, Esq. (USA) Ygal Saadoun (France/Egypt) Steve Williams, Esq. (USA) Rebecca Wong (United Kingdom) iii IV J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 FOREWORD In this edition, we explore seemingly disparate realms of regulation and legislation and discover shared nuances in growing concern for current legal framework in all facets of legal practice and scholarship.
    [Show full text]
  • Bayh-Dole of United States for Purposes of This Chapter by Execu- Act
    § 187 TITLE 35—PATENTS Page 88 tion is amended by striking ‘‘of this title’’ each CHAPTER 18—PATENT RIGHTS IN INVEN- place that term appears. See 2011 Amendment TIONS MADE WITH FEDERAL ASSISTANCE note below. Sec. HISTORICAL AND REVISION NOTES 200. Policy and objective. Based on Title 35, U.S.C., 1946 ed., § 156 (Feb. 1, 1952, 201. Definitions. ch. 4, § 6, 66 Stat. 5, 6). 202. Disposition of rights. Language is changed. 203. March-in rights. 204. Preference for United States industry. AMENDMENTS 205. Confidentiality. 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after 206. Uniform clauses and regulations. ‘‘181’’ and after ‘‘184’’. 207. Domestic and foreign protection of federally 1988—Pub. L. 100–418, which directed the insertion of owned inventions. ‘‘willfully’’ after second reference to ‘‘whoever’’, was 208. Regulations governing Federal licensing. executed by making the insertion after ‘‘or whoever’’, 209. Licensing federally owned inventions. as the probable intent of Congress. 210. Precedence of chapter. 211. Relationship to antitrust laws. EFFECTIVE DATE OF 2011 AMENDMENT 212. Disposition of rights in educational awards. Amendment by Pub. L. 112–29 effective upon the expi- AMENDMENTS ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after 2000—Pub. L. 106–404, § 4(b), Nov. 1, 2000, 114 Stat. 1744, that effective date, see section 20(l) of Pub. L. 112–29, substituted ‘‘Licensing federally owned inventions’’ for set out as a note under section 2 of this title. ‘‘Restrictions on licensing of federally owned inven- tions’’ in item 209.
    [Show full text]
  • Nova Law Review
    Nova Law Review Volume 22, Issue 3 1998 Article 9 The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification Werner Stemer∗ ∗ Copyright c 1998 by the authors. Nova Law Review is produced by The Berkeley Electronic Press (bepress). https://nsuworks.nova.edu/nlr The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification Werner Stemer Abstract In March 1997, the United States Supreme Court issued its decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (”Hilton Davis I/,)’ which had been eagerly anticipated in the intellectual property community. KEYWORDS: disclosure, issues, contract Stemer: The Doctrine of Equivalents after Hilton Davis and Markman, and a The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification TABLE OF CONTENTS I. INTRODUCTION .......................................................................... 784 II. PRELIMINARIES ......................................................................... 784 A. The Patent Contract............................................................ 785 B. The Patent Claim ................................................................ 788 C. The EnablingDisclosure .................................................... 791 D.After the Grant-Reissue ...................................................... 792 E. Infringement........................................................................ 793 III. THE DOCTRINE OF EQUIVALENTS ............................................
    [Show full text]
  • Process Considerations in the Age of Markman and Mantras
    Case Western Reserve University School of Law Scholarly Commons Faculty Publications 2001 Process Considerations in the Age of Markman and Mantras Craig Allen Nard Case Western University School of Law, [email protected] Follow this and additional works at: https://scholarlycommons.law.case.edu/faculty_publications Part of the Intellectual Property Law Commons Repository Citation Nard, Craig Allen, "Process Considerations in the Age of Markman and Mantras" (2001). Faculty Publications. 197. https://scholarlycommons.law.case.edu/faculty_publications/197 This Article is brought to you for free and open access by Case Western Reserve University School of Law Scholarly Commons. It has been accepted for inclusion in Faculty Publications by an authorized administrator of Case Western Reserve University School of Law Scholarly Commons. PROCESS CONSIDERATIONS IN THE AGE OF MARKMAN AND MANTRAS Craig Allen Nard* Professor Nard argues that although notions of uniformity and certainty have always been part of patent law parlance, since the Fed­ eral Circuit's decision in Markman v. Westview Instruments, Inc., these noble ends have achieved mantra status. In Markman, the Fed­ eral Circuit, in the name of uniformity and certainty, characterized claim interpretation as a question of law subject to de novo review, thus positioning itself as the arbiter of claim meaning. Although Pro­ fessor Nard disagrees with this characterization and asserts that uni­ formity and certainty are ill-served by such, he concedes that it is here to stay, at least for the foreseeable future. Therefore, Professor Nard addresses Markman on its own terms. Consequently, to achieve uni­ formity and certainty in the context of de novo review, he suggests a proposal to encourage the Federal Circuit to accept interlocutory ap­ peals of district court claim interpretations or so-called Markman hearings.
    [Show full text]
  • 2200 Citation of Prior Art and Reexamination of Patents
    Chapter 2200 Citation of Prior Art and Reexamination of Patents Citation of Prior Art and Reexamination of Patents 2247 Decision on Request for Reexamination, 2201 Introduction Request Denied 2202 Citation of Prior Art 2247.01 Examples of Decisions on Request for 2203 Persons Who May Cite Prior Art Reexamination 2204 Time for Filing Prior Art Citation 2248 Petition From Denial of Request 2205 Content of Prior Art Citation 2249 Patent Owner's Statement 2206 Handling of Prior Art Citation 2250 Amendment by Patent Owner 2207 Entry of Court Decision in Patent File 2250.01 Correction of Patent Drawings 2208 Service of Citation on Patent Owner 2251 Reply by Requester 2252 Consideration of Statement and Reply 2209 Reexamination 2253 Consideration by Examiner 2210 Request for Reexamination 2254 Conduct of Reexamination Proceedings 2211 Time for Requesting Examinations 2255 Who Reexamines 2212 Persons Who May File a Request 2256 Prior Art Patents and Printed Publications 2213 Representative of Requester Considered by Examiner in Reexamination 2214 Content of Request 2257 Listing of Prior Art 2215 Fee for Requesting Reexamination 2258 Scope of Reexamination 2216 Substantial New Question of Patentability 2259 Collateral Estoppel In Reexamination 2217 Statement in the Request Applying Prior Art Proceedings 2218 Copies of Prior Art 2260 Office Actions 2219 Copy of Printed Patent 2260.01 Dependent Claims 2220 Certificate of Service 2261 Special Status For Action 2221 Amendments Included in Request by 2262 Form and Content of Office Action Patent Owner
    [Show full text]
  • Reforming Patent Reexamination Procedure for the Small Business and Small Inventor
    COMMENT CREATING A VIABLE ALTERNATIVE: REFORMING PATENT REEXAMINATION PROCEDURE FOR THE SMALL BUSINESS AND SMALL INVENTOR WILLIAM BARROW* TABLE OF CONTENTS Introduction ...............................................................................................630 I. Background on Reexamination.......................................................632 A. Ex Parte Reexamination ..........................................................633 B. Inter Partes Reexamination......................................................634 C. Director-Ordered Reexamination............................................635 D. Reexamination’s Amendment Process ....................................636 II. The Shortfalls of Reexamination ....................................................636 A. Ineffectiveness of Ex Parte and Inter Partes Reexamination.....637 B. Restrained Use of Director-Ordered Reexamination...............638 C. Loopholes in the Amendment Process ....................................639 III. Reforming Reexamination..............................................................640 A. Administrative Estoppel via Post-Reexamination Procedure....642 B. Expanded Use of Director-Ordered Reexamination................643 Conclusion ................................................................................................645 * J.D. Candidate, May 2008, American University Washington College of Law; B.S. Electrical Engineering, University of Pennsylvania, 2004. I would like to thank Professor Joshua Sarnoff and Professor Robert Kasunic for their
    [Show full text]