In a recent decision, the Federal Circuit found that a district court's grant of a stay pending inter partes reexamination without considering the patentee's pending motion for a preliminary injunction was an abuse of discretion. The Federal Circuit held the grant of the stay effectively denied the preliminary injunction motion, thereby making the stay order appealable. The court then held the district court should have considered the preliminary injunction motion and, after considering the four preliminary injunction factors, made a determination regarding the injunction before staying the proceedings for the reexamination.

More detail on Procter & Gamble Co. v. Kraft Foods Global, Inc. after the jump.

[More]

In an appeal from the Board of Patent Appeals and Interferences, the Federal Circuit affirmed the Board's rejection of the claims based upon obviousness-type double patenting over previously-granted related patents.  The technical aspects of the invention are complex, but are overshadowed by the procedural aspects of this reexamination.  The majority and dissenting opinions seem to discuss two different cases.  The majority holds the double patenting issue was available in the reexamination under the former § 303 (in part because the rejection at issue was made after the amendment), and the dissent holds the reexamination improper because the issue was previously considered.  The majority holds the expert declarations unpersuasive, but the dissent considers them unrebutted.  In the end, the rejections are affirmed, even though the patents covered an invention that resulted in a Nobel Prize to one of the inventors.

More detail of In re Basell Poliolefine Italia S.P.A. after the jump.

[More]

In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences.  The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it to the Board, and therefore waived the issue on appeal.  

On the merits, the court agreed there was a substantial new question of patentability and therefore reexamination was properly granted.  The court also agreed with the Board that the evidence of commercial success did not rebut the prima facie case of obviousness, as there was no evidence that the commercial success was the "driving force" behind the sales of the patented product.  Accordingly, the court affirmed the rejection of the claims.

More on In re DBC after the jump.

[More]

The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability."  In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference.  The reference was also the subject of invalidity claims in an infringement litigation.  In that case, the district court and Federal Circuit concluded the accused infringer had not met its burden to show invalidity by clear and convincing evidence.  

The losing party in the litigation then sought reexamination of the patent.  The USPTO granted reexamination, and subsequently held the relevant claims unpatentable based on the same prior art asserted in the infringement case and used as a supporting reference during the original prosecution.  The patentee appealed, arguing the reference could not pose a new question of patentability, given its previous consideration by both the USPTO and the Federal Circuit.

The Federal Circuit affirmed.  Noting the differing burdens of proof in litigation and reexamination, the court found the two outcomes were not necessarily contradictory.  Further, given the amendment to § 303 in 2002, the court held that a substantial new question of patentability could be found even if the prior art was considered by the USPTO during the original prosecution.  Under the revised statute, "a reference may present a substantial new question even if the examiner considered or cited a reference for one purpose in earlier proceedings."  The relevant question is "whether the particular question of patentability presented by the reference in reexamination was previously evaluated by the PTO. . . . Section 303(a) as amended . . . requires a more context-specific approach that is based on an analysis of what the PTO actually did."  This determination "will generally require an analysis of the record of the prior proceedings to determine if and how the examiner used the reference in making his initial decisions."  This is a question of fact that will be reviewed for substantial evidence, but the ultimate question of whether a substantial new question of patentability exists is a question of law.

Here, because the reference was "not evaluated as a primary reference that taught or made obvious the specific analytical method claimed," there was a substantial new question of patentability, and the grant of reexamination was proper.

More detail of In re Swanson after the jump.

[More]

In a decision Tuesday, the Federal Circuit affirmed a district court's holding that the USPTO's interpretation of the inter partes reexamination procedure was correct, and therefore that all patent applications (other than reissue applications) filed after November 29, 1999 are eligible for inter partes reexamination, even if priority is claimed to an application filed before that date.  

While the district court did not address the issue of the level of deference due to the USPTO's interpretation of the statute at issue, the Federal Circuit determined the USPTO was entitled to Chevron deference.  Because the USPTO's interpretation of the statute was reasonable, the court affirmed inter partes reexamination was available for the patent at issue that claimed priority to an application filed before November 29, 1999, but issued from a continuation application filed after that date.

Interestingly, the court spent several pages of its decision laying out the method for determining whether and what level of deference is appropriate to the USPTO in this case.  It seems probable that the court was laying out the relevant issues in preparation for hearing the appeal in the Tafas case regarding the USPTO's enjoined claim and continuation rules.

More detail of Cooper Techs. Co. v. Dudas after the jump.

[More]

In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants.  The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.

While the case went to the jury pre-KSR, the court held that the district court's jury instructions on obviousness, which focused on the teaching-suggestion-motivation test, including that a motivation to combine references may be found in the nature of the problem to be solved, did not warrant reversal.  This indicates that the effect of KSR on the obviousness analysis may not be as dramatic as some have predicted, at least outside the USPTO.

In addition, the court held that the requirements in 35 U.S.C. § 305 regarding new claims in reexamination proceedings need not be specifically noted by the applicant when adding new claims.  Instead, the court confirmed that the limit on new and amended claims in reexamination is that they may not enlarge the scope of the original claims.

More detail of Cordis Corp. v. Medtronic AVE, Inc. after the jump.

[More]