Examining patent docs at USPTO

Patent and reexamination docs

This will be a simple guide to following the progress of patent and patent reexams at the USPTO.

DISCLAIMER: I am not a lawyer, nor am I qualified to give legal advice – what follows is my own understanding – readers should do their own research before they arrive at a conclusion.

Application Numbers

Patents in progress can be searched using their application number.

Patent reexaminations can be searched using their application number.

Patents that have been awarded (and have a patent number now) – can be searched using their original application number, or by using their patent number.

Something about patent reexaminations

Patent reexaminations are similar to patent applications except more rigorous.

In patent reexaminations, a challenger usually has asked the USPTO to reexamine the validity of a patent (though sometimes patent owners have been known to provoke reexamination – as it can sometimes help to “clean up” a patent and make it bulletproof in preparation for a later challenge).

The challenger asks the USPTO to reexamine a patent “from scratch” in light of prior art that the challenger presents.

The patent reexamination process is thus similar (and as long as) the original patent application process – in both cases the patent is examined “from scratch” without any “presumption of validity”.

In a patent reexamination the USPTO therefore tends to reject every claim that could potentially have a “significant new question” (SNQ) of patentability (i.e. any claim that deserves attention).

For this reason in patent reexams, often many or all of the claims of the patent are rejected as an initial presumption.

And over the course of the patent reexamination process, claims are allowed back in as the patent owner makes their argument, and the challenger makes their argument.

Eventually what survives is a patent that has withstood the full scrutiny of the challenger and the full burden of the prior art that the challenger brings to bear in order to stop re-development of the patent during the patent reexam.

For this reason any patent claim that survives challenge in a reexam is considered to be beyond reproach in the courts – because it has withstood the FULL SCRUTINY of the USPTO in the light of all possible arguments that the challenger could throw at it.

Therefore a patent which survives reexamination becomes a double-edged sword as it becomes insurmountable for the challenger.

(Such a case is with the litigation Netlist vs. Inphi which was delayed pending reexamination by Inphi request to USPTO to reexamine the relevant Netlist patents – these patents survived reexamination and barring no significant reversals at the Board of Patent Appeals and Interferences this result will make Inphi have no case when Netlist vs. Inphi resumes)

Searching at the USPTO

To search for progress or info on patents awarded, patents in progress or patent reexaminations in progress/completed, goto the USPTO PAIR website:

http://portal.uspto.gov/external/portal/pair

You will be presented with a captcha (to confirm you are human).

You can then enter a patent number, or an application number (for a patent, patent application or patent reexam).

For the Netlist patents ‘537 and ‘274 that are relevant to Netlist vs. Inphi, you would use the application numbers for the patent reexaminations:

‘274 – application number: 95/001,337
‘537 – application number: 95/001,381

At the next screen, you can see the date of filing for the reexam and other such info.

Click on the Transaction History tab to see the progress of the case.

The Continuity Data tab provides you information about the lineage of the patent or the patent reexamination. When a patent is a descendant (i.e. modification/improvement) of a previous patent it is called a “continuation” of the earlier patent.

However to download documents for the various filings, click on the Image File Viewer tab.

To download a filing, click on the checkbox on the right, and then click on the PDF button at the top above the checkbox column.

To download the whole set of filings, click on the checkbox next to the PDF button (this will check all the checkboxes below) and then click on the PDF button.

The downloaded information will be in the form of a PDF file which you can save on your computer.

Downloading the USPTO decision on ‘537, ‘274 reexams

As an example, you can download the USPTO decisions on the ‘537 and ‘274 reexaminations.

‘274 – application number: 95/001,337
‘537 – application number: 95/001,381

For the 95/001,337 patent reexamination, you would use the application number above, and click on the checkbox for the filing:

03-12-2012 XI.ACP Action Closing Prosecution (nonfinal) PROSECUTION 33
03-12-2012 1449 List of References cited by applicant and considered by examiner PROSECUTION 2
03-12-2012 RXFILJKT Paper Reexam File Jacket is scanned PROSECUTION 1

Click on the checkboxes for these and click on the PDF button at the top – this will download all these as one pdf file.

For the 95/001,381 patent reexamination, you would use the application number above, and click on the checkbox for the filing:

02-07-2012 XI.RAN. Right of Appeal Notice PROSECUTION 30
02-07-2012 1449 List of References cited by applicant and considered by examiner PROSECUTION 3
02-07-2012 RXFILJKT Paper Reexam File Jacket is scanned PROSECUTION 1

The more recent filings after that are related to additional information provided by Netlist, or Inphi filing an appeal for Board of Patent Appeals and Interferences (for example the latest in the 95/001,381 reexamination is USPTO saying that Inphi appeal to BPAI is defective so try again). Appeals to the BPAI are restricted to the issues discussed in the reexam and cannot exceed that narrow range of inquiry.

Netlist vs. Inphi

Netlist vs. Inphi was stayed pending patent reexams. Presumably the court’s time would be saved as the issue of whether Netlist IP in load reduction and rank multiplication actually survives the prior art would be better decided by the USPTO.

Once Netlist vs. Inphi resumes – at that point Inphi will be in a bind as it will not be able to challenge NLST IP in load reduction and rank multiplication (which Inphi uses in making LRDIMM buffer chipsets).

Patents which survive reexams cannot be challenged again in court (since presumably the challenger has exhausted all arguments already at the USPTO, having had an opportunity to have patent deconstructed and constructed again with full opportunity given to Inphi to mess with it at every step during the reexams at the USPTO).

Background – patent reexamination as a double-edged sword

Patent reexamination is a long drawn out process where a patent owner’s patents are reexamined “from scratch” at the USPTO (i.e. there is “no presumption of validity” when examining the patent afresh during reexams):

http://www.haynesboone.com/files/Publication/0bcd3628-5a1d-4323-b03d-b9843b67c1c6/Presentation/PublicationAttachment/b618c7f2-21af-42c4-86bc-5061e401a438/11-16-06_McCombs-ODell_Reexamination%20Paper.pdf
THE NEW ROLE OF REEXAMINATION IN PATENT LITIGATION

(pg. 16 ):

An explicit intent of the reexamination procedures is “to maximize respect for the reexamined patent.” 54 Although not explained, this statement does not infer any “presumption of validity” to the patent being reexamined. In reexamination, “there is no presumption of validity and the ‘focus’ of the reexamination ‘returns essentially to that present in an initial examination.’” 55 Reexamination by definition is just that, and requires the examiner to apply the same analysis as for an original examination.

While the patents remain valid during the reexam process, for the purposes of the patent reexamination, the patent is built up from scratch by first assuming it is invalid and then the patent is slowly built up as the challengers arguments and patent owner’s arguments are heard.

The process is similar to when the patent was first awarded, except now the challenger is given the opportunity to stop development and re-assembly of the patent at every step.

The benefit of this (for the challenger) is that by employing this tactic, they are able to:

– delay litigation (since courts dealing with cases which are still in the early stages tend to rule for stay of proceedings pending resolution at the USPTO i.e. “why not wait a bit”)

– the potential exists for all claims of the patent to be rejected (and this is esp. true of patents which are not vigorously defended by the patent owner)

However, there is a danger for the challenger as well (the double-edged sword) – if some claims survive the reexamination process:

– the surviving claims become IMPOSSIBLE to challenge

– a court will not even allow a challenger to hint those patent claims could be invalid

This means that patent reexaamination may be a good dilatory strategy (for example, a delay in court proceedings may allow the company to go about it’s business, engage in an IPO without fear of interruption).

However the downside is that IF the patent reexamination leads to any claims surviving reexam, those claims become impossible to refute any further.

To clarify, a “third-party requester” is the party who is challenging a patent:

http://www.haynesboone.com/files/Publication/0bcd3628-5a1d-4323-b03d-b9843b67c1c6/Presentation/PublicationAttachment/b618c7f2-21af-42c4-86bc-5061e401a438/11-16-06_McCombs-ODell_Reexamination%20Paper.pdf
THE NEW ROLE OF REEXAMINATION IN PATENT LITIGATION

(pg. 3 ):
But inter partes reexamination has not been pursued routinely for fear it will backfire with an affirmation of the patent claims by the Patent Office, and create estoppel in the litigation as to any ground or issues the requester raised or “could have raised.” 4

(Footnotes: )
4 An estoppel adverse to a third-party requester (which does not exist in ex parte reexamination) will attach in the case of an inter partes reexamination, if the requester is unsuccessful in the inter partes reexamination proceeding. The requester is estopped from later asserting in any civil action, or in a subsequent inter partes reexamination, the invalidity of any claim finally determined to be valid and patentable on any ground the third-party requester raised or could have raised in the inter partes reexamination. 35 U.S.C. § 315(c) (2006). Also, the requester might be estopped from later challenging in a civil action any “fact” determined in the inter partes reexamination.

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4 responses to “Examining patent docs at USPTO

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