Friday, September 05, 2008

In re Swanson on re-examination

The CAFC holds that, as long as there are new questions of patentability, re-exams can keep on coming:

We hold that under 35 U.S.C. § 303(a), as amended in 2002, despite consideration of U.S.
Patent No. 4,094,647 (“Deutsch”) in the initial examination and our prior decision, there
was a substantial new question of patentability regarding whether Deutsch anticipated
and made obvious claims 22-25 that made reexamination warranted.

The patent related to analytical chemistry -->

The 4,094,647 patent discloses a method of quantitatively analyzing small amounts of
biological fluids
, such as milk, blood, and urine, or other solutions, to detect the
presence of a particular substance (the analyte)
. In the method disclosed, one or more
“reaction zones” containing a bound reactant are spaced out on a test strip made of a
liquid-permeable solid.

In litigation, the '647 patent survived an invalidity challenge-->

Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343
(Fed. Cir. 2003) (“Abbott Labs. II”). In particular, we sustained the judgment that
Deutsch did not anticipate the asserted claims, noting that “the burden having been on
Syntron to prove by clear and convincing evidence that the claims were anticipated, we
cannot conclude that the jury verdict on anticipation was not supported by substantial
evidence.” Id. at 1357.

The CAFC got into Portola Packaging and the resultant Congressional Action-->

The reexamination statute now provides, in pertinent part:

Within three months following the filing of a request for reexamination under the
provisions of section 302 of this title, the Director will determine whether a
substantial new question of patentability affecting any claim of the patent
concerned is raised by the request, with or without consideration of other patents
or printed publications. . . . The existence of a substantial new question of
patentability is not precluded by the fact that a patent or printed publication was
previously cited by or to the Office or considered by the Office.

35 U.S.C.A. § 303(a) (2002) (emphasis added).

Important points-->

The statute does not define what constitutes a “substantial new question of
patentability.” However, the language added in the amended statute specifically
discusses references “previously cited by or to the Office or considered by the Office,”
35 U.S.C. § 303(a) (2002) (emphases added), but does not address any prior citation or
consideration by courts


In particular, “the two forums take different
approaches in determining validity and on the same evidence could quite correctly
come to different conclusions.” Ethicon, 849 F.2d at 1428.

Points lost on Lemley and Obama -->

In civil litigation, a challenger who attacks the validity of patent claims must
overcome the presumption of validity with clear and convincing evidence that the patent
is invalid. 35 U.S.C. § 282.
If this statutory burden is not met, “[c]ourts do not find
patents ‘valid,’ only that the patent challenger did not carry the ‘burden of establishing
invalidity in the particular case before the court.’” Ethicon, 849 F.2d at n.3 (internal
citations omitted) (emphasis in original).


In PTO examinations and reexaminations, the standard of proof—a
preponderance of evidence—is substantially lower than in a civil case,
In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985); there is no presumption of validity, Etter, 756 F.2d
at 856; and the “examiner is not attacking the validity of the patent but is conducting a
subjective examination of the claims in light of prior art,” id. at 857-58. And unlike in
district courts, in reexamination proceedings “[c]laims are given ‘their broadest
reasonable interpretation, consistent with the specification . . . .’” Trans Tex. Holdings,
498 F.3d at 1298 (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).

This is ONE reason by the gold-plating proposal of Lemley and Obama is stupid.

***On re-exam numbers

Patent Reexamination Numbers and PatFT, part II


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