Fall Carolina Patent Trademark and
Copyright Law Association Meeting
Patent Law Developments
by
Tom Irving
Sept. 24, 2011
© Finnegan, 2011
1
The Presenter gratefully acknowledges Stacy Lewis for her
assistance in the preparation of these slides.
Disclaimer

These materials are public information and have been prepared solely for
educational and entertainment purposes to contribute to the
understanding of American intellectual property law. These materials
reflect only the personal views of the authors and are not individualized
legal advice. It is understood that each case is fact-specific, and that the
appropriate solution in any case will vary. Therefore, these materials may
or may not be relevant to any particular situation. Thus, the author and
FINNEGAN cannot be bound either philosophically or as representatives of
various present and future clients to the comments expressed in these
materials. The presentation of these materials does not establish any
form of attorney-client relationship with the author or FINNEGAN. While
every attempt was made to insure that these materials are accurate,
errors or omissions may be contained therein, for which any liability is
disclaimed.
2
Patent Reform: Bill Sent to President for Signature:
Enacted: Sept. 16, 2011!






First-inventor-to-file
New definition of prior art
Post-grant proceedings
Best mode
Supplemental examination
Inventor’s Oath






Tax strategy patents
Pre-grant submission of
prior art
Derivation
Joinder
Business Method Patents
Prior User Rights
3
America Invents Act Effective Dates
Effective date of provisions is one year from enactment (Sept. 16, 2012) unless otherwise provided (Sec. 35)
Not “otherwise provided”: advice of counsel (Sec. 17), travel expenses (Sec. 21), satellite offices Sec. 23/24), priority examination for important technologies (Sec. 25), Study
on implementation (Sec. 26), Study on genetic testing (Sec. 27), Patent Ombudsman (Sec. 28), Study diversity of patent applicants (Sec. 29), Sense of Congress (Sec. 30),
Study international patent protections for small businesses (Sec. 31), Budgetary effects (Sec. 36)
Effective Date: Oct. 1, 2011
PTO Funding (Sec. 22)
Effective Date: Immediate upon enactment: September 16, 2011
Best mode (Sec. 15)
(including 119(e)(1) and 120; effective to
“proceedings commenced on or after”
September 16, 2011. See 35 USC §120 –
“proceedings” broad
Defense of Prior Commercial Use (Sec. 5)
Venue (Sec. 9)
Appeals from Board to CAFC
(Sec. 7(e))
Marking (Sec. 16)
Micro-entity
Fees for Patent Services (Sec. 11)
Jurisdiction, incl. joinder (Sec. 19)
Funding agreements (Sec. 13)
Amendment to §306 (changing 145 to 144)
PTO Fee Setting Authority (Sec. 10) (7year sunset clause)
Limitation on issuance of human
organism patents (Sec. 33)
Tax Strategies (Sec. 14)
Pro bono program (Sec. 32)
Patent term extension (Sec. 37)
Standard for inter partes reexam
changes from SNQP to “reasonable
likelihood” of prevailing
Effective Date: 10 days after enactment: September 26, 2011
Effective 60 days after enactment: November 16, 2011
Prioritized examination fee and surcharge (Sec. 11(h) and (i))
Fee for paper filing (Sec. 10(h))
Effective Date: 1 year from enactment: Effective September 16, 2012
Inventor’s oath, changes to § 112 (joint inventor) (Sec. 4)
Preissuance submission by 3rd parties (Sec. 8)
Post-Grant Review and IPR (Sec. 6, except for amendment to §306 (changing 145 to
144), which takes effect on the date of the enactment)(gradual implementation over
4 years).
Patent Trial and Appeal Board (Sec. 7),
except jurisdiction over appeals of reexam decisions to CAFC take effect upon
enactment
Business method patents (Sec. 18)(8-year sunset clause)
Supplemental examination (Sec. 12)(applies to patents filed
before, on, or after effective date)
Technical amendments, includes changes to reissue statute (Sec. 20)
Study of patent litigation (Sec. 34)(DUE 1 year after enactment)
Effective Date: 18 months from enactment: Effective March 16, 2013
First-inventor-to-file, new §102, amended §103, repeal of §104, derivation, Repeal of Statutory Invention Registration (Sec. 3)
4
Road-Map
U.S.C. § 100(i)(1) defines “effective filing date” for
claimed invention [see page 4 of the statute].
SEC. 3(n)(1) defines effective date of amendments
to 35 U.S.C. § § 102 and 103 [see pages 23-24 of
the statute].
35 U.S.C. § 102(a)(1) [see page 5 of the statute]
defines prior art/ § 102(b)(1) exceptions [see page 6
of the statute]
35 U.S.C. § 102(d) [see page 8 of the statute]
defines prior art under 35 U.S.C. § 102(a)(2) [see
pages 5-6 of the statute](earlier-filed, laterdisclosed) (§ 102(b)(2) exceptions [see pages 6-7 of
the statute]).
5
35 U.S.C. § § 100(i)(1) and (j)



§ 100(i)(1) The term ‘effective filing date’ for a claimed invention in a patent
or application for patent means—
 (B) the filing date of the earliest application for which the patent or
application is entitled, as to such invention, to a right of priority under
section 119, 365(a), or 365(b) or to the benefit of an earlier filing date
under section 120, 121, or 365(c).
 (A) if subparagraph (B) does not apply, the actual filing date of the patent
or the application for the patent containing a claim to the invention; or
§ 100(j): “The term ‘claimed invention’ means the subject matter defined by a
claim in a patent or an application for a patent.’’
Entitlement does not require best mode (SEC. 15(b) amending Sections
119(e)(1) and 120). [page 116 of statute] Effective immediately to
“proceedings” commenced on or after September 16, 2011! . [pages 116 117 of statute] Legislatively modifies In re Gosteli (Fed. Cir. 1989). See 35
USC §120 – “proceedings” broad.
6
Effective Date of § § 102/103 Changes

SEC. 3(n)(1) Except as otherwise provided in this section, the
amendments made by this section shall take effect upon the
expiration of the 18-month period beginning on the date of the
enactment of this Act, [March 16, 2013] and shall apply to any
application for patent …that contains or contained at any time:
A. a claim to a claimed invention that has an effective filing
date as defined in section 100(i) [remember: “entitled to”]
…, that is on or after the effective date described in this
paragraph [March 16, 2013]; or
B. a specific reference under §§ 120, 121, 365(c) to any patent
or application that contains or contained at any time such
claim. [antecedent for “such claim” has to be sub.para.
(A)]
7
Straddling the Effective Date: Double Trouble
First to Invent System Applies
PCT
Filing
Enactment:
Sept. 16, 2011
PCT
Filing
Priority
Date
“First To Invent” System or “First Inventor to
File” System? (see SEC. 3(n)(1)(A))
Scenario 1: no claims entitled to priority date: first-to-file
Scenario 2: all claims entitled to priority date: first-to-invent
Scenario:3: at least 1 claim not entitled to priority date: first-to-file
Enactment:
Sept. 16, 2011
Priority PCT
Date Filing
Enactment:
Sept. 16, 2011
Effective Date:
March 16,
2013
“First Inventor to File” System
Applies
Assumes “priority date” is ex-US
8
Filing Strategy Based on Effective
Date for Prior Art Provisions

File before 18 months after enactment (on or
before March 15, 2013)
 New applications; CIPs; New claims (disclosed but not
previously claimed)?
9
35 U.S.C. § 102(a) – Defines Prior Art Under New Law
§102 Conditions for patentability (a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless—
(1) the claimed invention was patented [anywhere in
the world], described in a printed publication
[anywhere in the world], or in public use [anywhere in
the world], on sale [anywhere in the world], or
otherwise available to the public [anywhere in the
world] before the effective filing date of the claimed
invention;
~ OR … ~
10
35 U.S.C. § 102(a) – Cont’d
§102 Conditions for patentability (a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless— …
(2) the claimed invention was described in a [US] patent issued
under section 151 [US patent], or in an application for [US or PCT
application designating the US (§374)] patent published or
deemed published under section 122(b) [US application or PCT
application designating the US], in which the [US] patent or [US
or PCT designating the US] application, as the case may be,
names another inventor and was effectively filed before the
effective filing date of the claimed invention.
[see §102(d)(next slide): effective filing date can be earliest foreign priority
document]
[§102(a)(2)somewhat like old §102(e); filed before effective filing date but not
disclosed before effective filing date, otherwise would be under §102(a)(1)]
11
§102(a)(2)/§102(d)


Earlier-Filed but Later-Published [US] Patent Documents
Somewhat like old §102(e) but cannot be antedated by earlier invention.
Following publication, the disclosure has retroactive availability as prior art as of
effective filing date
 Available as prior art for novelty and obviousness purposes


§102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—
For purposes of determining whether a patent or application for patent is prior
art to a claimed invention under subsection (a)(2), such patent or application
shall be considered to have been effectively filed, with respect to any subject
matter described in the [US] patent or [US or PCT designating the US]
application“(2) if the patent or application for patent is entitled to claim a right of priority under section
119, 365(a), or 365(b), or [entitled] to claim the benefit of an earlier filing date under section
120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing
date of the earliest such application that describes the subject matter.” [“entitlement”
trumps “describes”- therefore enablement is required?]
 ‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the
application for patent”
12

New 35 U.S.C. § 102(b) – Defines Exceptions to Prior Art


These exceptions define what is not prior art under §§ 102(a)(1)
and (a)(2), respectively, and are generally personal to the
inventor:
§102 (b) EXCEPTIONS.
(1) [twins with (a)(1)]Disclosures [anywhere in the world]
made 1 year or less before the effective filing date [anywhere
in the world; see §100(i)(1)] of the claimed invention shall not
be prior art under (a)(1) if:
(A) made by an inventor or by another who obtained the subject matter
directly or indirectly from an inventor, or
(B) if the subject matter had been previously publicly disclosed by an
inventor or one who obtained it from an inventor;
13
New 35 U.S.C. § 102(b) – Cont’d

§102 (b) EXCEPTIONS – …
(2) [twins with (a)(2)] Disclosures appearing in [US or PCT
designating the US] applications and [US] patents are not
prior art under (a)(2) [NOTE: NO RECITATION OF “ONE YEAR
OR LESS”] if:
(A) obtained directly/indirectly from an inventor;
(B) the subject matter was publicly disclosed before filing
by an inventor or one obtained it directly or indirectly from
an inventor; or
(C) the subject matter disclosed and the claimed invention,
not later than the effective filing date of the claimed
invention, were owned by the same person or subject to
an obligation of assignment to the same person.
14
First-to-Invent vs. First-Inventor-to-File
First-to-Invent: X Can Win
X CONCEIVED
X RTP
Y CONCEIVED
X FILED
Y RTP
Y FILED
First-Inventor-to-File: Y (Independent Inventor) Wins
15
Definition of Prior Art: Scenario 1
X FILED
X PUBLISHED IN US
Y FILED

Old: Y Could Antedate X with evidence of earlier invention.
New: Since X filed first, X is Prior Art to Y (for § § 102 and 103 purposes)

Assuming §102(b)(2) exceptions do not apply.

16
Definition of Prior Art: Scenario 2
X SOLD IN EUROPE
(Confidential???)
Y FILED



Old: Sale of X Not Prior Art to Y because not in US.
New: Sale of X Is Prior Art to Y. [§102(a)(1) only]
Consider if 102(b)(1) exception applies.
17
Definition of Prior Art: Scenario 3
X PUBLICLY USED: ex US
> 1 Year
Y INVENTED


Y FILED
Old: Public use outside US was not prior art.
New: X’s use outside the 1-year period is prior art to Y wherever it
occurred; exception under §102(b)(2) cannot apply because no patent or
patent application.
18
Definition of Prior Art: Scenario 4
X PUBLICLY USED
< 1 Year
Y INVENTED


Y FILED
Old: Y could antedate X’s use.
New: X’s use inside the 1-year period may be prior art to Y
wherever it occurred: grace period exception under
102(b)(1) may apply.
19
How the NEW U.S. Grace Period Will Work
(§102(b)(1)(A)): Applies to Both Applications Here
Disclosure “by or obtained from”
an inventor
§102(b)(1)(A), but
only if effective
filing date is the
foreign priority date
Grace
Period!
§102(b)(1)(A)
Public use
Public use
U.S. Patent
12 mos.
Foreign
Priority
Filing
12 mos.
U.S. Filing Date
20
How the NEW U.S. Grace Period Will Work:
§102(b)(1)(A) and (B) Respectively Apply
Grace
Period!
Disclosure “by or obtained from”
an INVENTOR
Disclosure by ANYONE
§102(b)(1)(A)
§102(b)(1)(B)
Public use
Public use
U.S. Patent
12 mos.
Effective Filing Date
21
How the NEW U.S. Prior Art Provisions Will Work:
A Sword and A Shield (A Hat Trick!)
Disclosure “by or obtained from”
Inventor Barbara
Filing by independent inventor Tom
§102(b)(1)(A)
§102(b)(2)(B)
§102(a)(1)
Public use
12 mos.
Pat.
App.
Filed
Tom’s US
application
published
Barbara’s
U.S. Patent
Effective Filing Date of Barbara
Barbara avoids public use through §102(b)(1)(A); Barbara’s public use avoids Tom’s
publication through §102(b)(2)(B) and defeats Tom through § 102(a)(1);
First inventor to file loses because other inventor disclosed first.
22
Hilmer Doctrine Abolished by §102(d)

§102(d) eliminates need for foreign applicants to file provisional applications
by establishing that an application is “effectively filed” on the date an
application was filed under §119 or § 365.

Hilmer Doctrine evidenced bias of U.S. law against inventions originating
outside the U.S.
Based on two U.S. litigations (Hilmer I and II) that held that the foreign right of priority of a
U.S. patent does not provide a prior art effect under § 102(e) as of that foreign priority date,
nor does inventive work outside the U.S. have a prior art effect under § 102(g). Rather, one
needed a U.S. filing date to have a prior art effect.
 Created “shield vs. sword” distinction



Foreign applicant needed to file in the U.S. to get a § 102(e) or § 102(g) prior
art effect date.
Current foreign applicant practice: file U.S. provisional at the same time as
foreign priority application to get earliest § 102(e) date.
23
Impact of § 102(d)(2) – Prior Art Date
Prior art date
U.S. Prov.
Appl.
Pub.
Appl.
U.S. Appl.
Non-Prov.
Prior art date
UK
Prior art date
FR
English
USPAT
Pub.
Appl.
PCT
(U.S.)
PCT
(U.S.)
English
USPAT
Pub.
Appl.
French
USPAT
• NO geographical or language distinction
•Assuming entitlement to date benefit of US Prov App., UK app., and FR app.
24
US Patent Reform: Effect on §103

New law modifies §103 to read:
 would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to which the claimed
invention pertains…

Present §103 reads:
 would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains

Hence, the new US law switches from “at the time the invention was made”
to the time “before the effective filing date of the claimed invention”

Generally broadens the scope and content of the prior art in the U.S.

Effective date March 16, 2013 (same as for § 102).
25
Third-Party Challenges: Current
Board of Patent Appeals
Interferences
Inter Partes Reexam
Filing
Examining
Corps
Ex Parte Reexam
Issuance
26
Third-Party Challenges: New
Patent Trial and Appeal Board
Inter
Partes
Review
Post-Grant Review
Filing
Examining
Corps
Ex Parte Reexam
Issuance
27
Challenges in PTO:
Current Regime v. New Regime
New and revised procedures that open “windows”
for challenges.
Current Regime
New Regime
Preissuance 3rd Party Submissions
(citations only)
Preissuance 3rd Party Submissions
(can provide details)
Ex Parte Reexam
(post-grant)
Ex Parte Reexam
(post-grant)
Post-Grant Review (PGR)
(within 9 months of grant)
Inter Partes Reexam
(post-grant)
Inter Partes Review (IPR)
(after 9 months of grant)
28
PGR

Features
 Broad ground: any ground that could be raised under
paragraph (2) or (3) of § 282(b) (relating to invalidity of the
patent or any claim).
 Lower burden of proof than litigation.
 Lower cost than litigation (but increased discovery TBD).
 Final determination within 1-1½ years.
 Must identify real parties in interest.
 Threshold: “more likely than not that 1 or more claims invalid.”
 Estoppel effect.
29
IPR

Features
 Narrower grounds: §
102 or § 103 but only on basis of
prior art patents and printed publications.
 Lower burden of proof than litigation.
 Lower cost than litigation (with some discovery).
 Final determination within 1-1½ years.
 Must identify real parties in interest.
 Threshold: “reasonable likelihood would prevail.”
 Estoppel effect.
30
IPR & PGR – Relation to Infringer’s Lawsuit

No IPR/PGR if petitioner had previously filed a civil action
challenging validity. (§315(a)(1)) /§325(a)(1))

Civil action challenging validity filed by petitioner on or after
date IPR/PGR petition is filed - automatically stayed unless:
Patent owner moves to lift the stay;
 Patent owner files action or counterclaim for infringement; or
 Petitioner moves to dismiss civil action.
 §325(a)(2)/§325(a)(2)


Counterclaim of invalidity does not qualify as a civil action
challenging validity (§325(a)(1)/§325(a)(3)).
31
IPR – Relation to Patentee’s Lawsuit

No IPR if petition is filed >1 year after
petitioner is served a complaint alleging
infringement. (§315(b)).
 Joinder (§315(c)).
 Time limit does not apply to request to join as a
party to the IPR.
 Joinder is discretionary.
32
PGR – Relation to Patentee’s Lawsuit

If patentee files suit for infringement within 3
months of issuance, court may not stay
motion for preliminary injunction on the basis
that PGR petition was filed or instituted.
(§325(b)).
33
IPR & PGR – Final Decision—Estoppel

Petitioner/RPI (“real-party-in-interest”) cannot request or
maintain a proceeding before the PTO with respect to the
claim at issue on any ground that the petitioner raised or
reasonably could have raised during the IPR/PGR.
§315(e)(1)/§325(e)(1).

Petitioner/RPI cannot assert, in a district court litigation or ITC
proceeding, that the claim is invalid on any ground that the
petitioner raised or reasonably could have raised during the
IPR/PGR. §315(e)(2)/§325(e)(2).

Settlement: No estoppel. §317/§327.
34
IPR Effective Date, Exception, Limit

(A) Effective date: amendments effective 1 year after the date of the
enactment of this Act and shall apply to all patents issued before, on, or
after such date [Sept. 16, 2012] SEC. 6(c)(2)(A)

(B) EXCEPTION: inter partes reexam request under old law if filed after date
of enactment [Sept. 16, 2011] but prior to effective date of new IPR [Sept.
16, 2012]. SEC. 6(c)(3)(C). [lower standard for getting old inter partes
reexam]

(C) GRADUATED IMPLEMENTATION.—The Director may impose a limit on
the number of inter partes reviews that may be instituted during each of the
first 4 years following the effective date of subsection (a), provided that such
number shall in each year be equivalent to or greater than the number of
inter partes reexaminations that are ordered in the last full fiscal year prior
to the effective date of subsection (a). SEC. 6(c)(2)(B)
35
PGR Effective Date, Exception, Limit

(A) Effective date: amendments effective 1 year after the date of the
enactment of this Act. SEC. 6 (f)(2) and, “except as provided in
section 18 [transitional program for business method patents] and
in paragraph (3) [pending interferences], shall apply only to patents
described in section 3(n)(1) [slide 5, effective filing date after one
year from enactment (Sept. 16, 2012)].” [out of phase with IPR
effective date; compare slide 34]

(B) EXCEPTION: interferences may be dismissed without prejudice to
the filing of a PGR petition. SEC. 6 (f)(3).

(C) GRADUATED IMPLEMENTATION.—The Director may impose a limit
on the number of post grant reviews that may be instituted during
each of the first 4 years in which the amendments are in effect. SEC.
6(f)(2)(B).
36
Comparison
Preissuance
Submissions
When?
Limited time
before allowance
Ex Parte
Reexam
Inter Partes
Reexam
Post-Grant
Review
Inter Partes
Review
After grant
After grant
(being
replaced)
Within
9 months of
grant
After
9 months of
grant
More likely than
not
or important
novel/unsettled
legal question
Reasonable
likelihood of
success
No
No
Threshold
Showing
N/A
SNQ
Substantial
new question
of
patentability
Anonymity
Yes
Yes
No
37
Comparison
Preissuance
Submissions
Ex Parte
Reexam
Inter Partes
Reexam
Post-Grant
Review
Inter Partes
Review
Issues raised Issues raised
or could have or could have
been raised:
been raised:
PTO, district
PTO, district
court, and ITC court, and ITC
Estoppel
None
None
Issues raised
or could have
been raised
Before
Whom?
Examiner
CRU
CRU
Board
Board
Declaration
Declaration
and
discovery
Declaration
and
discovery
Discovery/
Evidence?
N/A
Declaration
38
Comparison
Speed
within PTO
Appeal
Preissuance
Submissions
Ex Parte
Reexam
Inter Partes
Reexam
Post-Grant
Review
Inter Partes
Review
Case
dependent
Many Years
Many Years
1 to 1½ years
1 to 1½
years
Only patentee
Only
Both parties Both parties
can appeal to patentee can can appeal to can appeal to
Board and
appeal to
Board and
Federal
then Federal
Board and
then Federal
Circuit
Circuit
then Federal
Circuit
Circuit
Both parties
can appeal
to Federal
Circuit
39
Impact and Strategy Considerations

Consider the following in choosing a mechanism:
 Windows of time
 Threshold requirements
 Available grounds: PGR broader than IPR
 Estoppel effect
 Decision maker (Examiner, Board)
 Discovery opportunities
 Speed
 Limits on numbers to be considered by PTO
 Oral hearing and appeal
40
Best Mode

Still required to disclose best mode in §112, ¶1.

But failure to disclose best mode no longer a ground
for invalidity or unenforceability. See SEC. 15(a)
amending 35 U.S.C. § 282.

Effective on enactment.

§§ 119(e)(1) and 120: best mode compliance
gone? [But see slide 6 and pages 116-117 of the
statute]

Is it really that simple?
41
Supplemental Examination and
Interface with en banc Therasense

Allows submission of prior art in your own patents

§257(c):



But SE effect does not apply against allegations already raised in
district court or ANDA notice para. IV before date of filing request
(§257(c)(2)(A)), or
SE effect shall not apply to any defenses raised in ITC litigation/district
court litigation unless SE and any reexam ordered therefrom is finished
before the date on which the action is brought (§257(c)(2)(B)).
For PTO “to consider, reconsider, or correct information believed
relevant to the patent”
Prior art?
 Inconsistent positions?
 Errors?
 Therasense: Rule 56?

42
Supplemental Examination

3 months for PTO to indicate whether or not submitted information
raises a SNQP.



If no SNQP, subject to exceptions on previous slide, patent cannot be held
unenforceable on considered information ; isn’t that “but-for” materiality?
If yes, can trigger reexam
 But patentee cannot make submissions regarding the art or claims
before first Office Action.
Assuming the patentee establishes patentability of the claim (either in
original or amended form) in the reexamination over the SNQ raised by
the information reviewed, the patentee is insulated in subsequent
litigation from a charge of inequitable conduct based on that information,
subject to exceptions noted on previous slide ((§257(c)(1)).
43
Supplemental Examination

Is this the holy grail of a purge of inequitable conduct
under a “but-for” materiality standard?

IN GENERAL.—A patent shall not be held unenforceable
on the basis of conduct relating to information that had
not been considered, was inadequately considered, or
was incorrect in a prior examination of the patent if the
information was considered, reconsidered, or corrected
during a supplemental examination of the patent. The
making of a request under subsection (a), or the
absence thereof, shall not be relevant to enforceability
of the patent under section 282. (§257(c)(1)).
44
Supplemental Examination

Exceptions: see above and next bullet.

(§257(f)). Nothing in this section shall be construed—
 (1) to preclude the imposition of sanctions based upon criminal or antitrust
laws (including section 1001(a) of title 18, the first section of the Clayton Act,
and section 5 of the Federal Trade Commission Act to the extent that
section relates to unfair methods of competition);
 (2) to limit the authority of the Director to investigate issues of possible
misconduct and impose sanctions for misconduct in connection with
matters or proceedings before the Office; or
 (3) to limit the authority of the Director to promulgate regulations under
chapter 3 relating to sanctions for misconduct by representatives practicing
before the Office.

Do (1)-(3) compel full disclosure as discussed in Therasense majority and
dissent? Are they adequate brakes on “affirmative egregious misconduct”?
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Supplemental Examination

Fraud exception (§257(e)) [pp. 112-113].

What is “fraud” and what investigation needed?

(e) FRAUD.—If the Director becomes aware, during the course of a
supplemental examination or reexamination proceeding ordered
under this section, that a material fraud on the Office may have
been committed in connection with the patent that is the subject of
the supplemental examination, then in addition to any other actions
the Director is authorized to take, including the cancellation of any
claims found to be invalid under section 307 as a result of a
reexamination ordered under this section, the Director shall also
refer the matter to the Attorney General for such further action as
the Attorney General may deem appropriate.

Is that an attempt to compel full disclosure?
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Reissue Amendment
▪
Another purge opportunity? Amendment to §§251, 253:
– Whenever any patent is , through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by reason
of a defective specification or drawing, or by reason of the patentee
claiming more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment of
the fee required by law, reissue the patent…. (American Invents Act
Sec. 20(d) and (e)).
– Would one use a combination of Reissue and Supplemental
Examination to insulate reissued claims from allegation of
inequitable conduct?
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Inequitable Conduct:
Standards for Intent and Materiality

Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir.
2010), reh’g en banc granted, --F.3d– (Fed. Cir. May 25, 2011)

Abbott’s statements in US prosecution found to be inconsistent with
statements made to the EPO.

Statements made to the EPO found to be not disclosed to USPTO examiner.

District court: Unenforceable for inequitable conduct.

Withheld information was material, and “neither Pope nor Dr. Sanghera provided a
credible explanation for failing to submit the EPO documents to the PTO”
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Inequitable Conduct

Therasense Majority on Rehearing En Banc:

“but for” materiality = if the PTO would not have allowed a claim had it been
aware of the undisclosed prior art.

“affirmative egregious misconduct” exception = no “but-for” materiality but it would
otherwise be unjust to allow the patentee to enforce the patent. Example: filing of an
unmistakably false affidavit. Does not include mere nondisclosure of prior art references.

specific intent to deceive = single most reasonable inference that one with a Rule
56 duty "knew of the reference, knew that it was material, and made a deliberate
decision to withhold it.” No more “should have known” standard for intent (no
disagreement from dissent or concurring opinions). Absence of a good faith
explanation for failure to disclose a material reference (which was the case in
Therasense) does not, by itself, constitute intent to deceive.

Explicitly forbade inferring intent solely from materiality and abandoned the
“sliding scale”. (No disagreement in the dissenting or concurring opinions).
49
Federal Circuit Decision Is Final


6-5 disagreement within Federal Circuit
on fundamental principle of materiality.
Becton Dickinson counsel publicly stated
on Sept. 13, 2011, at IPO meeting that
petition for certiorari was not and will
not be filed.
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First Post-Therasense Federal Circuit Decision

American Calcar v. American Honda Motor Co., Inc., -F.3d___(Fed. Cir. June 27, 2011)
 District Court: Inequitable conduct based on failure to disclose
material information to the USPTO.

Explicitly used “sliding scale”:

the court held that, given that the withheld information was highly material, less
evidence of intent was required to reach a finding of inequitable conduct.
 Federal Circuit: Vacated and remanded

Inappropriate to use “sliding scale,” and district court used incorrect standards for
determining materiality and intent.


Some of withheld information was material (found to invalidate the patent claims), but other
undisclosed information was evaluated for materiality under current Rule 56 standard and the
“reasonable examiner” standard, both rejected in Therasense.
District court “failed to make a finding …that the withheld information would have blocked issuance
of the claims ….”
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First Post-Therasense Federal Circuit Decision

American Honda (con’t)
 Federal Circuit: Specific findings on intent required.
Lack of credibility of witness alone is insufficient to find
specific intent to deceive under the knowing and deliberate
standard.
 “On remand the court should make a specific finding on
whether any of the three inventors knew that withheld
information was material and whether they made a deliberate
decision to withhold it.”

52
Post-Therasense District Court Decisions

Ameranth, Inc. v. Menusoft Systems Corp., --F.Supp.2d___
(E.D.Tex. May 26, 2011)
 Undisclosed prior art was material -> jury found that the withheld
references invalidated the claims.
 Applicant stubbornly, while incorrectly, believed that omitted
reference was simply different from the invention and need not
be submitted = alternative reasonable inference
 No inequitable conduct.
53
Post-Therasense District Court Decisions

Light Guard Systems, Inc. v. Spot Devices, Inc., --F.Supp.2d ____
(D.Nev. July 22, 2011)
 Undisclosed prior art reference was found “but-for” material
 Patentee submitted evidence that he considered the undisclosed
reference cumulative and that he (and his patent attorney)
believed that the prior art reference was different from the
claimed design.
 No inequitable conduct -> more than one reasonable inference
for why the patentee failed to disclose the prior art reference,
and therefore no “single most reasonable inference.
54
Post-Therasense District Court Decisions

Generac Power Systems Inc. v. Kohler Co., --- F.Supp.2d __, (E.D.Wis.
July 5, 2011)




“[U]nder the ‘tightened standards’ for materiality and intent, the patentee
showed that the defendant’s ‘inequitable conduct defense lack[ed] substantial
merit.’”
Defendant “erred in arguing a ‘reasonable examiner’ standard for materiality,
and did not show a “a reasonable likelihood that the PTO would not have
allowed the claims of the '345 patent if it knew of the undisclosed references.”
Defendant also erred in relying on a “sliding scale” analysis to infer intent.
Patentee did not dispute that the reference was intentionally withheld, but:

“Generac is not required to provide a good faith explanation for its failure to
disclose, ‘unless the accused infringer first ... prove[s][the] threshold level of intent
to deceive,’ which Kohler has not proved. … Therefore, Generac has shown that the
'345 patent will likely withstand Kohler's enforceability challenge.”
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Thank You!
Contact Information:
Tom Irving
202.408.4082
[email protected]
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