Sterne discusses how in certain high profile situations in the past two years, the stock price (and company valuation) of a publicly traded patent owner has dropped precipitously due to a significant decision in a patent suit or in a concurrent reexamination of the patent in suit such as the issuance of a non-final office action rejecting some or all of the claims of the patent in reexamination. This precipitous drop is in large part due to “short selling” in the capital markets of the stock of the patent owner, which is driven down by the shorts as a way to make a big profit. Read More on this Hot Topic.

You can listen to that keynote address here: Rob Sterne Bright Lights Keynote Address

The Bright Lights Conference showcased 50 of the most innovative public companies ranked in the 90th percentile for technology leadership. These companies were selected from more than 1,600 small cap companies which were scored, ranked and analyzed on the basis of their rate of innovative change, as well as the novelty, quality and industry impact of their patents.

What is the proper standard for materiality? 

What role should the United States Patent and Trademark Office’s rules play in defining materiality?

Should a finding of materiality require that but for the alleged misconduct, one or more of the claims would not have issued?

Inequitable conduct is intertwined with reexamination practice in many ways. Third-party requesters may file a reexamination request for the purpose of having the PTO find that a particular document raises a valid SNQ, which finding may be cited at trial for the materiality element in an inequitable conduct defense. The duty of disclosure attaches to the patent owner in reexamination (but not the third-party requester).

Complying with that duty can be problematic for even the most diligent and forthright patent owner, especially after the Notice of Intent to Issue a Reexamination Certificate (NIRC) has issued and before the Reexamination Certificate has published. A patent owner with a large portfolio of pending patent applications that are related to the patent under reexamination has to be especially careful and diligent.

Reexamination counsel is a prime target for a charge of violating of the duty of disclosure in a parallel patent litigation.  A violation can create subsequent issues for reexamination counsel before the Office of Enrollment and Discipline.  These and other concerns make this en banc rehearing relevant to reexamination practice.

The Federal Circuit stated that briefs of amicus curiae will be entertained in the en banc rehearing. Four amicus briefs, including one from the PTO, were filed with the petition for rehearing en banc.  It is expected that there will be many additional amicus filings in this case.

Under the current briefing schedule, it is expected that the Federal Circuit will hear arguments in the case next October or November.

Download the Order

Therasense Inc v Becton Dickinson and Company (Fed Cir April 26 2010)(en banc)

Wednesday, March 3, 2010

Presented By

David Cushing, Sughrue Mion, PLLC
David Emery, Sughrue Mion, PLLC

An important webinar on the fundamentals of US reexamination practice and procedure before the USPTO, sponsored by the American Intellectual Property Law Association was held on Wednesday, March 3, 2010.  David J. Cushing and David Emery of Sughrue Mion, PLLC, of Washington, DC were the presenters. The seminar lasted for 90 minutes and was accompanied by a useful Powerpoint presentation and article. The seminar is available through the AIPLA website for a fee and can be accessed here.

David J. Cushing, Sughrue Mion, PLLC

David Emery, Sughrue Mion, PLLC

As summarized on the AIPLA website: “Ex parte and inter partes reexamination practice is an important tool for both patent owners and non-patent holders.  It is extremely important to anticipate how a reexamination will impact your intellectual property rights whether you are a patent owner engaged in a reexamination or a third party requestor challenging a patent.  The presenters, based on their extensive experience, will provide insights into ex parte and inter partes reexamination practice … Those new to reexamination and those wishing to keep pace with this evolving practice will benefit from this online program.”

Presentation Topics

• Introduction to reexamination;
• Tradeoffs between ex parte and inter partes reexamination;
• Reexamination in the context of litigation;
• Practical aspects of reexamination procedure at the USPTO.

Summary

David Emery begins the seminar with an overview of ex parte reexamination practice and procedure. It is a good basic tutorial that provides relevant statistics and practice tips. He then proceeds to discuss the basics of inter partes reexamination.  At various points in the program polls were taken to assess audience attitude about ex parte and inter partes reexaminations both before and after the Supreme Court KSR decision.  He presents USPTO statistics showing the rapid increase in filings of inter partes re-examinations since 2001. David Cushing is a noted reexamination attorney with considerable experience and the public is fortunate that he shares his practical insights in this seminar. These observations and others are important for successful reexamination practice.

David Cushing

The statistics posted on the USPTO web site show substantial year-over-year increases in reexamination filings as parties become increasingly wary of the very high cost and extremely low success rates for patent litigation.  The good news is that inter partes reexamination is an attractive enough alternative to cause that increase.  The bad news is that the same statistics show that there are 556 pending inter partes reexams (the net of reexamination orders less reexamination certificates) as of the end of 2009, 270 of those from reexamination orders issued in the previous 15 months.  This recent increase in the caseload is stressing the system.

David Cushing, then addresses important practice tips centered on inter partes reexaminations.  He warns practitioners to be careful with their reexamination requests to avoid an unintended “bounce” that could occur for mere administrative informalities. He comments that in his opinion the significant work overload at the Central Reexamination Unit is resulting in a very critical eye being brought to reexamination requests in terms of filing formalities. He also comments on the 50 page requirement for responses to inter partes office actions and how the use of declarations can count in the page limit when it is denominated as part of “attorney argument.”  He also addresses the role of the Substantial New Question (SNQ), particularly with regard to serial reexaminations.

David Cushing

Because the inter partes reexamination rules and proceedings are relatively new, there will be a lot of clarification occurring over the next decade, by interpretation and sometimes revision of the rules and MPEP, and perhaps some PTO policy changes as well.  While this is occurring, there will be frustrations.  But in the meantime, even with its imperfections, inter partes reexamination is a very attractive alternative to litigation. This seminar warrants review by anyone interested in a good overview of reexamination practice and procedure at the USPTO.