Supreme Court Upholds “Clear and Convincing” Standard of Proof for Patent Invalidity While Suggesting Juries Be Instructed on the Weight of the Evidence

On June 9, 2011, the Supreme Court in an 8-0 decision authored by Justice Sotomayor, affirmed the long-standing rule that a challenger must demonstrate invalidity of a patent by “clear and convincing evidence.” Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S.__, slip op. at 20 (June 9, 2011).  Microsoft had argued for a more relaxed “preponderance of the evidence” standard in a case where the prior art that formed the basis for the challenge had not been considered by the Patent Office.  While the holding puts to rest speculation over whether the Court would apply the lesser standard of proof, the Court endorsed the use of a jury instruction on the weight to be given prior art evidence that had not been considered by the Patent Office, stating that such an instruction, “when requested, most often should be given.”  Id.at 17.

Section 282 of the Patent Act of 1952 provides that “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.”  35 U.S.C. § 282. While § 282 expressly places the burden of proof regarding validity of the patent upon an accused infringer, it does not expressly address the standard of proof.  Microsoft argued that the preponderance standard applied generally or, in the alternative, at least where the prior art asserted had not been considered by the Patent Office.  The Court rejected both contentions.

The Supreme Court rejected Microsoft’s first contention by finding that Congress had adopted the heightened standard from the common-law in 1952 when it enacted § 282.  The Court determined that by the time of the 1952 Act, the common law presumption of validity reflected the “universal understanding” that the preponderance standard was insufficient.  That understanding was reflected in the holding of Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 (1934). In that case, the Supreme Court held that an accused infringer must overcome the presumption of validity by “clear and cogent evidence.” Id.at 2.  Accordingly, the Court held that the codification of the presumption in § 282 brought with it its common-law meaning, including the heightened standard proof, and there was no reason to “drop” the heightened standard simply because §282 does not explicitly recite it.

In arguing for the lesser “preponderance of the evidence” standard of proof when the prior art was not considered by the Patent Office, Microsoft relied in part on the Supreme Court’s dicta in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007), that at least in cases where the invalidating prior art was not before the Patent Office, the presumption of validity “seems much diminished.”

Notwithstanding its earlier observation, the Supreme Court rejected the notion of a variable standard of proof.  The Court acknowledged language found in “numerous courts of appeals” cases before the 1952 Act, that referred to the presumption of validity being “weakened” or “dissipated” when the evidence was not considered by the Patent Office.  However, it explained that such language could not be read as supporting a different standard.  “Instead, we understand these cases to reflect the same common sense principle that the Federal Circuit has recognized throughout its existence—namely, that new evidence supporting an invalidity defense may ‘carry more weight’ in an infringement action than evidence previously considered by the Patent Office.”   Slip op. at 17.  Accordingly, “new evidence” of invalidity may make it “easier” for a challenger to meet the “clear and convincing” standard.

The Court suggested that the weight to be given this new evidence be explained in an instruction to the jury:

[A] jury instruction on the effect of new evidence can, and when requested, most often should be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. . .  [T]he jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.

Id.at 17.  This language will undoubtedly increase the frequency of requests for a specific instruction on the weight of the new evidence and on the use of such instructions.

Justice Breyer, joined by Justices Scalia and Alito, wrote a concurring opinion which emphasizes the need to pay careful attention to the distinction between fact questions and legal questions, noting that the standard only applies to evidence of the facts.  The Court’s opinion, slip op. at 2, does note that the ultimate question of patent validity is a question of law and that the same factual questions underlying the Patent Office’s original examination will also be present in an infringement action.  Id.  While this language is suggestive, the Court’s opinion never expressly states that the standard of proof applies only to the factual questions.  The concurrence thus raises the question of whether a court should refrain from applying the clear and convincing standard to legal conclusions, such as whether given facts render an invention obvious.  Further, the observations of the concurrence may impact the specific questions put to the jury in the form of a special verdict and instructions regarding the standard of proof.

Thus, the development of the patent law may be more affected by dicta from Microsoft Corp. v. i4i Ltd. Partnership than by its holding, which affirms the long-standing “clear and convincing” standard.

Supreme Court Upholds Clear and Convincing Standard for Invalidity but with a Twist

A unanimous Supreme Court has rejected Microsoft’s argument that a lower “preponderance of the evidence” standard should apply to patent invalidity challenges. The Supreme Court, in last week’s Microsoft Corp. v. i4i Limited Partnership decision, reaffirmed the longstanding principle that a party challenging the validity of a patent must present “clear and convincing” evidence of invalidity.

The Supreme Court first established this heightened burden in the 1934 case of Radio Corp. of America v. Radio Engineering Labs, Inc. 293 U.S. 1 (1934). There, the Supreme Court held that invalidation required “clear and cogent evidence” to overturn an issued patent. The Patent Act later codified this heightened burden in 35 U.S.C. § 282, explaining that a patent “shall be presumed valid.”

Microsoft argued that the Court’s settled interpretation of Section 282 was incorrect and that the presumption of validity does not establish the need for “clear and convincing” evidence to invalidate a patent.

Relying on almost a century of precedent, the Supreme Court disagreed:

[B]y the time Congress enacted § 282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense [bears] “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence.

The Court also disagreed with Microsoft’s alternative argument—that the presumption of validity should be weakened when a party challenges a patent using art not before the Patent Office during prosecution. According to the Court, invalidity of a patent must always be proven by clear and convincing evidence.

An interesting twist comes in the Court’s recognition that “new evidence” of invalidity likely carries more weight than evidence already considered by the Patent Office. The Court references with approval the jury instruction given in the 1993 case of Mendenhall v. Cedarrapids, Inc. that states:

Because the deference to be given the Patent Office’s determination is related to the evidence it had before it, you should consider the evidence presented to the Patent Office during the [] application process, compare it with the evidence you have heard in this case, and then determine what weight to give the Patent Office’s determinations.5 F.3d 1557 (Fed. Cir. 1993).

The Court explained that “[a] jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.” Put differently, the Court recognized that a jury may properly give evidence of “new” prior art special weight in deciding whether the clear and convincing standard has been met.

On the whole, the Court’s ruling on the clear and convincing evidence standard can be viewed as a pro-patent decision (contrary to several of the Court’s other recent decisions, like KSR (obviousness), MedImmune (declaratory judgment jurisdiction), and eBay (permanent injunctions)). Yet, its explicit acknowledgement of the role which “new” prior art can have may give accused infringers and their defense counsel some degree of satisfaction. Using “new” prior art not considered by the Patent Office during prosecution, along with the benefit of good jury instructions emphasizing the proper place of this “new” prior art, defendants may improve their chances of invalidating asserted patents.

Reexamination Practice: One Size Does Not Fit All

Recently, there was a reexamination roundtable at the Patent Office last week where ideas for reexamination reform were proposed.  The Patent Office listened and took notes.  Relatively, it was a very productive meeting overall.  As the various speakers presented their comments to the questions posed by the Office, it was a clear reminder how everyone views reexamination differently:

  • Patent Owners who are trying to enforce their patents want a fair system that will not amount to a tool of delay and thin or meritless attacks on their patents;
  • Businesses and in-house counsel need a predictable system that can be used to challenge inferior patents and nuisance assertions;
  • Judges need to know that if a case is stayed pending reexamination, there will be a reasonably expedient final decision that can be used for the litigation;
  • Examiners need time and tools to help process unusually large and complicated reexaminations; and
  • The Patent Office needs clear rules that are fair to both sides, and can reach finality of a reexamination with special dispatch.

But right now we don’t have adequate metrics to know the situation, much less to measure progress.  What exactly does that mean?

Variation in Size and Complexity

For example, perhaps we should be tracking reexamination progress based on complexity:

  • Some reexaminations involve 5 claims.  Some involve 50 claims.  There is no reason why a 50 claim reexamination should take the same amount of time and resources as a 5 claim reexamination.
  • One reexamination may involve 4 grounds of rejection and another may involve 8.
  • One reexam request is 50 pages.  One is 2000 pages.
  • One reexamination involves several petitions.  Another involves no petitions.
  • One reexamination involves substantial claim amendments (including, adding new claims).  Another involves cancellation of claims.  Yet another has no amendments.

We could be counting claim volume as a metric, as opposed to just disposition of matters without regard to claim volume.  We could be tracking the disposition of petitions, pages of reexamination request, volume of SNQs, or any number of other metrics indicative of the size or complexity of a matter.

Variation in Timing – Especially due to Procedural Variations

Perhaps we should be tracking more information about pendency and measurement of time.  We should get more visibility into the timing of reexaminations at various stages.  Our current understanding of PTO statistics on reexaminations is that they often cite the time to NIRC.  That does not seem fair to the CRU, because the statistics do not seem to separate the amount of time in the CRU from the amount of time at the BPAI or the Federal Circuit.  That means that the pendency of reexaminations will scale with the numbers of appeals filed.  Perhaps the number in appeals is statistically strong or weak enough that this metric is a reliable indicator of pendency, but I do not see enough information to discern that.  And as the volume of cases increases, any change in appeal volume would change the statistical significance of past numbers.  Anyone with better insight and information is encouraged to send that to me and it will be posted if appropriate.

A Little More Data Would Go a Long Way

One size does not fit all when it comes to reexamination.  Of course, you cannot measure everything, but you also cannot manage what you do not measure.  A bit more detail in the figures would go a long way to measuring progress in the future.

Making Therasense of the Inequitable Conduct Doctrine

In a split in its decision (6-1-4), the Federal Circuit’s May 25, 2011 en banc opinion in Therasense, Inc. v. Becton, Dickinson and Co. attempts to unify the patch work of opinions on inequitable conduct, which is a judicially-created doctrine rooted in the U.S. Supreme Court’s cases on the doctrine of “unclean hands” where egregious conduct had occurred.1 (Full decision(opens in a new window)). The Federal Circuit emphasized that the previous assertions of the inequitable conduct doctrine based on its precedent have “plagued not only the courts but also the entire patent system.”2

The majority opinion of the Federal Circuit in Therasense tries to balance the importance of patent applicants being honest in dealings with the United States Patent Office (“Patent Office”) with the appropriate standard of review in determining whether inequitable conduct has actually occurred. As the Federal Circuit explained, the “low standards for intent and materiality” created by its previous opinions “have inadvertently led to many unintended consequences” including “increased adjudication cost and complexity, reduced likelihood of settlement, burdened courts, strained PTO resources, increased PTO backlog, and impaired patent quality[.]” Therefore, the Federal Circuit finally intervened to tighten the standard and redirect the application of the inequitable conduct doctrine to benefit the public and the patent system by protecting against “egregious misconduct, including perjury, the manufacture of false evidence, and the suppression of evidence.”3

The Decision

In Therasense, the Federal Circuit redefined the requirements for both the materiality and intent prongs, both of which are required to be proved by clear and convincing evidence, in making a determination of an inequitable conduct. The following charts illustrates the fractured nature of previous Federal Circuit opinions and how the en banc opinion unified the previous patch work of opinions:

Materiality

Before

At least 5 different standards, including:

  • refutes or is inconsistent with a position the applicant takes in … asserting an argument of patentability;
  • a “reasonable examiner” would have considered the information or prior art “important” in deciding whether to allow the application;
  • the misrepresentation was so material that the patent should not have issued;
  • the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so; and
  • the misrepresentation may have influenced the patent examiner in the course of prosecution.
After

But-For Test

  • the deception is only material if the USPTO would not have allowed the claim if it had been aware of the undisclosed information.

 

Intent

Before

General intent to deceive based on totality of circumstances.

After

Specific intent to deceive with evidence of knowing and deliberate decision to deceive.

Although actual evidence is not required, the Federal Circuit found that “to meet the clear and convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.'”4 The Federal Circuit further explained “[i]n making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”5

Finally, the Federal Circuit clarified that “a [district] court must weigh the evidence of intent to deceive independent of its analysis of materiality.”6 Consequently, the Federal Circuit has abolished the sliding scale of intent and materiality.

Sliding Scale

Before

A strong showing of intent may be allow a weak showing of materiality, and vice versa.

After

No sliding scale.

Response by Patent Office

In its ruling, the Federal Circuit expressly rejected the definition of materiality in 37 C.F.R §1.56 (“Rule 56”). The Court stated that it was not bound by Rule 56, and that Rule 56 “sets such a low bar for materiality, adopting this standard would inevitably result in patent prosecutors continuing the existing practice of disclosing too much prior art of marginal relevance and patent litigators continuing to charge inequitable conduct in nearly every case as a litigation strategy.”7

In reply to the Federal Circuit ruling, the Patent Office quickly issued a press release indicating that it is carefully studying the opinion and “expect to soon issue guidance to applicants regarding the materials they must submit to the Patent Office under their duty of disclosure.”8 It is unclear what actions the Patent Office may take, but if it amends Rule 56 to correspond with the en banc decision in Therasense, it could further strengthen the certainty of the standards required for equitable practice before the Patent Office.

What Does the Future Hold?

Going forward, the Therasense opinion may allow patent practitioners to reassess what documents they list in information disclosure statements and other filings with the Patent Office.  Moreover, future Patent Office guidance should clarify the issue of what needs to be disclosed to the examiner. Additionally, it is anticipated that the Therasense opinion will reduce the number inequitable conduct allegations, but it may also require more flexibility from various patent rules of district courts, which routinely require allegations of inequitable conduct to be made before the close of discovery.

Notably, it did not take long for a U.S. district court to rely on this new ruling in deciding to deny a motion for a finding of unenforceability due to inequitable conduct. In Ameranth, Inc. v Menusoft Systems Corp., et al.,9 the district court applied the new Therasense standard the day after it was issued, finding that although the “but-for” standard was met, the defendants failed to prove, by clear and convincing evidence, that there was specific intent to deceive the Patent Office.10

The Federal Circuit decision, however, did leave some potential new battlegrounds regarding the application of inequitable conduct. First, the Federal Circuit recognized the ability of district courts to infer intent from indirect evidence. Although the Court attempted to limit this loophole by stating “when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found,”11 it remains to be seen how district courts will apply this standard. Additionally, the Federal Circuit provided that when a “patentee has engaged in affirmative acts of egregious conduct” the misconduct is deemed to be material. This level of intent may overcome the requirement of “but-for” materiality having to be proved. The Federal Circuit suggests that this analysis should incorporate elements of the unclean hands doctrine, but it does not provide clear guidance on how this should be interpreted and suggests that this egregious conduct exception will allow for “flexibility to capture extraordinary circumstances.”12

Although this is a way to curtail the allegations of inequitable conduct, it is not the end of the story, and it remains to be seen if the U.S. Supreme Court will weigh in on the application of inequitable conduct or attempt to harmonize the Federal Circuit’s “but-for” test with the standards applied by other administrative agencies like the Securities Exchange Commission. We will continue to monitor the case and provide updates as it proceeds.

Use Petitions to Reverse Determination of No SNQ (Substantial New Questions of Patentability) in Inter Partes Reexamination

You see a competitor’s patent and believe it is invalid.  You perform a prior art search and find prior art that you think would render at least some of the patent claims unpatentable.  So after thinking about it some more, you decide to file a reexamination request in the Patent Office.  In that request you illustrate that the prior art was not considered before (or can be considered in a new light) and you propose how the prior art can be used to reject the patent’s claims.  You file the request.

To your surprise, you learn that the Patent Office determined that some of your proposals were substantial new questions of patentability (SNQs) and some were not.  Therefore, a reexamination is ordered, but not against all of the claims you requested.  You petition the Director to order reexamination for the proposed substantial questions of patentability that were not adopted.  The Director denies that petition.  What can you do?

The Third Party Requester in inter partes reexamination Control No. 95/001,089** tried to appeal the denial of the petition to the Board of Patent Appeals and Interferences (BPAI), but did not succeed.  The Third Party Requester appealed on the basis that 35 U.S.C. 315 provides it the right to appeal “. . . with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent. . . .”

But the BPAI disagreed, because 35 U.S.C. 312(c) states that the determination whether a SNQ is raised by the request “by the Director . . . shall be final and non-appealable.”  And since no reexamination will proceed, no final decision can be rendered pertaining to those claims.

To summarize, in an inter partes reexamination there is no appeal of the Director’s decision to not find that SNQ for those claims under 35 U.S.C. 312(c) and no reexamination of those claims means that no final decision will be rendered (favorable or otherwise) that is subject to appeal.  Therefore, in such cases 35 U.S.C. 315 does not afford a right of appeal and the BPAI has no jurisdiction to decide a non-appealable issue.

So, when no SNQ is determined for certain claims in an inter partes reexamination, that determination can be petitioned, but if the petition is denied then the BPAI has no jurisdiction to decide whether that determination should be reversed.

Free Market Economists Rejoice – Kappos Moves PTO Train to the Fast Track

In an unprecedented move that is sure to please free market economists, Director David Kappos positions the U.S. Patent & Trademark Office (“Patent Office”) train solidly on the fast track path for patent examination, thereby allowing patent applicants more control over the timing of their application’s examination simply with payment of an increased fee. Last summer, the U.S. Patent & Trademark Office (“Patent Office”) proposed a new examination process called “3-Track” that would give applicants three choices in how their application is examined: (I) accelerated examination, (II) normal examination, and (III) delayed examination. Due to the overwhelming support from the patent community for the accelerated track (“Track I”), on April 4, 2011, the Patent Office revised the rules of practice to officially implement Track I, with the changes going into effect on May 4, 2011.  As we previously reported,1 applicants requesting acceleration will not have to provide a copy of a search report, first office action from a foreign patent office, or a supplemental search from a participating intellectual property granting office, all of which were requirements in the original proposal last summer. The Patent Office has also indicated that acceleration will only be available for the first 10,000 applicants. Additionally, the Patent Office has indicated that they expect to implement Track III by the end of the year.

Track I allows an applicant to pay an additional priority fee of $4,000 (in addition to the required filing fees) in order for its application to be afforded prioritized examination with the goal of reaching a final disposition2 within one (1) year from the date of filing.3 The Patent Office has limited the requests for prioritized examination to a maximum of 10,000 applications for the first year in order to gauge the changed workflow. According to the Patent Office, the increased fees will go towards increasing productivity (e.g., hiring more examiners), and therefore, applications currently pending should not be delayed by this initiative.

Under normal Patent Office procedures, new patent applications are taken up for examination in the order in which they are filed, with an average pendency until the first office action is issued of approximately two and a half years.4 As we previously reported,5 the Patent Office has already implemented procedures that allow applicants of qualifying “green technologies” to petition for special status without having to pay any additional fees or file an “examination support document.”6 The new Track I initiative, however, now allows any application to receive expedited examination, with payment of the additional fee, regardless of the application’s subject matter.

In order to qualify for this prioritized examination, the application must meet the following requirements:

  • Be an original utility or plant nonprovisional application;
  • Be electronically filed;
  • Pay the required fees for requesting prioritized examination;7 and
  • Contain no more than four (4) independent claims and no more than thirty (30) total claims.

Additionally, because the applicant must make the request for Track I prioritization and pay the required fees at the time of filing of the application, applicants having applications pending at the time this new initiative is officially enacted will not be able to request prioritization for those applications. With that said, under the new proposal, newly filed continuation, divisional, and continuation-in-part applications that are filed on or after the date of implementation will be eligible for Track I status. Therefore, if an applicant wishes to procure a filing date before implementation of the Track I procedures for an application not yet filed, the applicant may proceed with filing an application prior to implementation, and then file a new continuation application claiming the benefit of their original filing. Similarly, if an application is currently pending and the applicant wishes to expedite that application, on or after May 4, 2011, the applicant may file a continuation application and request expedited status for that application. In each of these cases, the applicant gains the benefit of the earlier priority date at the cost of paying additional filing fees.

As the proposed initiative will be limited to the first 10,000 that apply, it is imperative for applicants to review their portfolio and determine which, if any, applications should be accelerated. Applicants should carefully weigh the initiative’s benefits against the requirements noted above–most notably, the claim limitations and increased fees. While it is unclear how many applicants will choose the fast track, one thing is clear; the move effectively allows the market, as opposed to the Patent Office, to decide which inventions will benefit from acceleration. Adam Smith would be proud.

Factors in Deciding Motions to Stay Litigation Pending Reexamination

If a patent is in reexamination at the outset of a patent infringement action, there is a possibility of obtaining a stay from the district court.  But motions to stay are not always successful, and they are decided  after consideration of several factors.  One case that demonstrates some of the factors in deciding whether to grant a motion to stay litigation pending reexamination is Quest Software, Inc. v. Centrify Corp. (case no. 2:10-CV-859 TS), venued in the Central Division of Utah.

Quest sued Centrify for patent infringement of U.S. Pat. No. 7,617,501 on August 27, 2010 in the Central District of Utah.  Three days later, Centrify sued Quest for patent infringement of another patent (the ’005 patent) in the Northern District of California.  Quest was a third party requester in an inter partes reexamination of the ’005 patent.  That reexamination was ordered by the Patent Office and the claims are under rejection.  However, the Northern District of California denied a stay in that case.

The same day that Centrify sued Quest, Centrify also requested inter partes reexamination of the ’501 patent.  The Patent Office ordered reexamination of the ’501 patent and rejected all 40 claims of the ’501 patent.

Centrify moved to transfer venue to the Northern District of California, and in the alternative, to stay the action pending the outcome of the reexamination of the ’501 patent if venue remained in Utah.

After denying transfer of venue, the Utah Court weighed three factors and ultimately denied Centrify’s motion to stay the matter.

THE FACTORS

The three factors considered were:

(1) whether discovery is complete and whether a trial date has been set;

(2) whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and

(3) whether a stay will simplify issues.

THE FACTS APPLIED TO THE FACTORS

(1) Even though the case was very new (which favors granting a stay) the Utah Court was concerned that granting a stay would “put this case at odds with the California Action, in which a stay was recently denied.”

(2) The Utah Court found that a stay would prejudice Quest and present a tactical advantage to Centrify because:

(a) Centrify would have years to continue alleged infringing activities, because an inter partes reexamination will likely take at least six years and up to eight years to complete, so Quest may suffer real harm;

(b) both companies may suffer harm due to fading memories and loss of evidence over such a long time;  and

(c) the Utah Court believes that the best resolution is to keep the case in line with the California Action in which a stay was denied.

The Utah Court did not find that a stay would clearly simplify issues, especially in light of the fact that there is a good chance that “at least some of the claims of the ’501 will survive the reexamination process, leaving the Court and the parties in the same position they are now, only months or years later.”

Patent Owner Reexamination Requests with Parallel Litigation

You have worked hard and obtained a patent for your company.  You do your homework and believe that your competitor is infringing your patent.  You ultimately engage the help of a litigation team and sue the competitor for patent infringement.  But your competitor is now a defendant and responds with allegations of invalidity based on publication prior art.

Your patent counsel provides some options.  One option is to plow ahead with the litigation and maintain course.   Another option is to file a reexamination request with the publication prior art and ask for a stay of the litigation pending the outcome of the reexamination.

You decide that latter course is the course of action you will take.  After all, if the prior art doesn’t pose a substantial new question of patentability (SNQ), then that is ammunition for your litigation because you can argue that the publication prior art is weak.  And if it does raise a SNQ, that is not equivalent to a prima facie case of unpatentability.  (In re Etter, 756 F.2d 852, 857.)  As long as you have claims that are confirmed by the reexamination, then you think you have a stronger patent position.

So your reexamination counsel drafts a reexamination request and files it.  And you get the stay you wanted.  But the reexamination request gets bounced by the Patent Office for not properly raising alleged SNQ’s posed by the publication prior art.  Now what do you do?  Should you quit now or argue more strenuously for the SNQ’s in a compliant response (due in 30 days)?  If you quit now, has this effort proven anything you can use in court?  And isn’t the Judge going to be a bit irritated that you did not file a compliant brief to get the Patent Office to truly consider the request?

If you instead argue the SNQ’s more assertively so the Patent Office might consider the request complete, then how hard should you argue?  If you push too hard, are you ditching your own litigation?

Faced with similar facts, the patent owner/requester in Reexam Control No. 90/009,881 (relating to U.S. Pat. No. 7,423,588**) tried an argument similar to this:

With respect to claim 1, the Reference discloses a [first thing], a [second thing], a [third thing], a [fourth thing], and a [fifth thing], as recited in claim 1 (pages 7-9 of the Reference). Thus, because the teachings of the Reference provide subject matter of the ’588 patent claims that was not taught in any prior art cited during the prosecution of the ’588 patent, the teachings of the Reference raise a substantial new question of patentability.  However, claim 1 is still believed to be patentable for the reasons stated herein.

An excerpt cannot provide all of the arguments, so you should review the matter yourself which is available at www.USPTO.govThe Patent Office recently (March 8, 2011) decided that the ex parte reexamination request was not compliant and gave the requester 30 days to resubmit its request.  Time will tell what the requester does next.