Right to Repair

By Samie Leigh

The two decade old Digital Millennium Copyright Act (“DMCA”) was intended to prevent circumvention of protective measures placed on copyrighted material such as movies and music.  In the absence, or perhaps scant presence, of legislative updates, the same laws used to govern movies and music have been extended to new technologies brought by the internet age.  To keep pace with emerging technology, section 1201 of the DMCA calls for triennial proceedings to determine the types of activity that are temporarily exempt from anti-circumvention laws. The proceedings are meant, in part, to prevent overreach of the DMCA into activities that should remain fair use.

At the same time, software is quickly becoming ubiquitous and more vulnerable to reverse engineering, necessitating intellectual property protection outside of trade secrecy.  The issues of increasing importance is determining what types of protection will continue to be available to copyrighted software and how “impermissible circumvention” could affect the ability of those who are neither software copyright owners or licensees to tinker with copyrighted software associated with hardware.

In the seventh triennial section 1201 proceedings, interested parties have been given the opportunity to submit comments for consideration and participate in public hearings that were held by the United States Copyright Office earlier this year.  In this article, we will discuss relevant copyright law and DMCA history, summarize some of the comments and concerns that have been submitted, and how the results may affect protection to copyright owners as well as non-licensed users.

The Exemption Proceedings

In these rulemaking proceedings, the Library of Congress, upon recommendation of the Register of Copyrights, determines exemptions to prohibitions to circumvention in particular uses.  The intent of the proceedings is to evaluate, on a case by case basis whether it is appropriate to apply DMCA restrictions to particular emerging technologies and the limited types of “innocent” uses that were outside the intended scope of the restrictions.

One controversial example is the exemption made for unlocking smart phones allowed in 2006, again in 2009, but then not renewed in 2012.  A ruled exemption in one cycle, in the absence of any other lawmaking, may not hold in the very next cycle. Uncertainty in this respect has the effect of deterring activity that may otherwise be permissible especially when it comes to investing in relevant business ventures upon reliance on previous exemption cycles. In this example, the decision not to renew the exemption was repealed by Congress in 2014 by passing the Unlocking Consumer Choice and Wireless Competition Act (“Unlocking Act”).  The need for the intervening legislation has further highlighted the uncertainty of the rulemaking process.

Expansion of Unlocking and Jailbreaking Devices 

In preparation for the seventh triennial section 1201 proceedings that took place earlier this year, many petitions were submitted to renew existing exemptions.  Additionally, there were a number of proposals to broaden classes of exemptions.  For example, the Institute of Scrap Recycling Industries (ISRI) has proposed extending the exemptions regarding circumvention of technological protection measures (“TPM”) for unlocking all computer programs without enumerating categories of devices, such as the requirement that the device be “used,” and requiring that the wireless network be a “telecommunications network.” The extension proposed by ISRI would allow consumers the ease of switching carriers and other types of service providers on connected devices.  For example, ISRI proposes the exemption should be extended to cover all wireless devices, such as security systems, farming equipment, and GPS trackers.

In another similar exemption class for “jailbreaking,” the Electronic Frontier Foundation (“EFF”) has proposed extending the jailbreaking exemption from “portable all-purpose mobile computing devices” to “general-purpose portable computing devices.”  The effect of the change will allow users to use additional or alternative software on any general purpose device designed to be used at home or carried on the individual.  For example, EFF suggests that the expansion cover voice assistant devices such as Amazon Echo to access streaming services, smartphones, tablets, personal computers, and other devices.

Expansion Diagnosis, Repair and Modification

Similarly, a number of submissions have been made to expand the exemptions relating to diagnosis, repair, and modification of computer programs associated with motorized land vehicles to all devices such as “internet of things,” other vehicles, appliances, computers, toys, among others.  For example, the broadening will allow consumers to modify the software of home appliances to repair or perhaps enhance the efficiency of the appliance.  This means that consumers would not be required to use approved technicians to make such repairs and can tinker with their own devices, such as vehicles and appliances.  The exemption is useful for customization of devices for more tech savvy consumers, but would be limited to the owner of the device rather than a third party technician.

With this limitation in mind, several petitions propose an extension of exemptions of repair to third parties working on behalf of an owner such as a car mechanic.  iFixit is among the handful of proponents for the proposed class broadening to third parties.  iFixit argues that consumers should be able to hire a technical service of their choice to return their devices to working order.  Although reverse engineering and tinkering is involved, there is no intent to pirate or steal any of the underlying software.  For example, a mechanic can modify the software of a tractor to enhance performance or to make a repair.  As eBay expressed, car mechanics were traditionally able to increase the power of a car by using aftermarket parts or tuning of existing hardware in the car, however newer cars require tuning to be performed in the software.  Moreover, the argument is that recalibration of software with the assistance of expert third party technicians should be fair use and within the rights of the device owner.

What The Outcome Could Mean For You

In light of the uncertainty outlined above, as an owner of the intellectual property in software, it is important to enhance protective measures to make it more difficult for users to access and modify the software.  A successful rejection of exemption could result in three years of anti-circumvention protection.  However, the protection may be easily reversed in a subsequent triennial proceeding or intervening legislation, as we saw in the case of unlocking cell phones.  If your software requires accessing other devices, such as a voice assistance device, the expansion of the exemptions described above could provide an answer to the question of legality that currently exists.  In the meantime, we await the announcement regarding results of the 1201 proceeding from the Librarian of Congress to ascertain the exemptions for the next three years.

Everyone Copied My Code!!

By Andrew Reed

Over 75% of Americans use a smartphone today according to the Pew Research Center. As a result of the large number of people utilizing smartphones, smartphone operating systems and applications are being developed at an ever-increasing pace. For software developers, one question that is not often considered until it is too late, is what can I do to protect my developments?

One way software can be protected is through copyright.  Even the largest of companies, Google Inc., could not avoid a copyright infringement suit by Oracle.  While the case is ongoing, it has the potential to change the direction of copyright caselaw for software related cases.

Oracle America, Inc. (“Oracle”) is the copyright owner of the JAVA operating system and development platform.  Oracle sued Google, LLC, after Google copied portions of the JAVA application programming interface (“JAVA API”).  More specifically, the lawsuit has resulted in a long and drawn out case that has been heard by two different juries, been appealed twice, and is currently being appealed for a third time.  The two decided appeals have focused on whether API’s, and more particularly the declaration code, and structure, sequence and organization (“SSO”) is copyrightable, and the question of fair use of copyrighted works.  In the first appeal, the Federal Circuit held that API’s, declaration code, and SSO are copyrightable, remanding the case back to the district court for a determination on Google’s fair use defense.  Fair use is a defense to copyright infringement that allows for the use of a copyrighted work often when the work is transformed into a parody, commented on, or critiqued.  While Google won on its fair use defense at the district court level, the decision was reversed upon Oracle’s second appeal to the Federal Circuit.

Both Oracle and Google stipulated to the fact that Google had copied the declaration code and SSO for 37 JAVA APIs, amounting to 11,500 lines of code that was copied.   The main focus was whether Google was entitled to the statutory defense of fair use.  A fair use determination requires a balancing of four factors: 1) the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect upon the potential market.

The first, third, and fourth factors are often the focus of most, with some discussing the second factor at length.  The purpose and character of the use is considered in light of the commerciality and transformative nature of the use.  Because Google admitted it copied the JAVA API code in order to speed up and incentivize the development of Android, there was no question the copying was for a commercial purpose, which weighs against a finding of fair use.[3]

If use of a copyrighted work adds something new, changes the meaning or message, or gives the copyrighted work a new purpose, then the new work may be sufficiently transformative to weigh in favor of a finding of fair use.  However, in the context of code development, if the code is used for the same purpose without changing the expression or meaning the fact that the code is implemented on a different platform is of little consequence.  As one court has noted, switching from computers to smartphones is not necessarily a contextual change of the original code. This does not prevent a company from reverse engineering the copyrighted work or code.  If a licensed work is reversed engineered and the code is then transformed for a new purpose then it would likely be considered a fair use.  Bottom line, if someone copies your code without a license and then modifies it substantially to create a new work, the use is more likely to be considered fair use.  However, if the work does not give a new expression, purpose or meaning to the copied code then it is likely not a fair use of your work.

The fourth factor, the effect upon the potential market, is highly probative in a consideration of the fair use defense.  If the analysis of the first factor leads to a finding of commercial use, then market harm or potential market harm can be presumed.   If a non-commercial use is found in the analysis of the first factor, then an analysis must be performed to determine the damage to licensing, and market expansion of the copyrighted work.  A court may also consider if customers have switched from the copyrighted work to the new work.  If these types of damages have occurred, then a finding of fair use is doubtful.

Copyright infringement can be challenging to prove at times, but it is one of the most effective forms of intellectual property protection.  Software can also be protected through other forms of intellectual property.  For example, the branding and logos for software can be protected through trademarks.  The graphical interface can be protected through design patents, and if the method, and/or operations performed are novel and unique, a utility patent may be an option as well.

If you believe that someone has copied your software or are concerned that you or your company may be infringing another’s work, please feel free to reach out to us.  We can provide you with an analysis of your options and provide you with recommendation on other steps that can be taken to protect the fruits of your labors.

Monkey Can Selfie But Can He Copyright?

By Shaukat Karjeker

What do whales, dolphins and porpoises have in common with a monkey of the Celebes crested macaques-type from Northern Sulawesi (Indonesia)?  And how does that in turn connect with the concept of “next friend” in the context of “standing”?  In fact, what is “standing”?  All of these are brought together in a tale that starts in Sulawesi with a monkey named Naruto and a photographer named David John Slater, who contrived to leave his photographic equipment unattended in the hope monkeys would activate it.  Seeing his opportunity, Naruto approached and took several selfies. 

Slater and Wildlife Personalities Ltd. (Wildlife”) published the selfies, and the rest is, as they say, history.  The selfies went viral on the Internet.  Slater and Wildlife claimed ownership of copyrights in the selfies.  Naruto brought suit claiming copyrights as the author of the selfies.  After all, it was undeniable, and Slater admitted, that Naruto pushed the button to take the selfies.  As a result of that button-pushing act, was Naruto the “author and owner of the copyrights”?  Of course, Naruto needed some help to bring this suit, and People for the Ethical Treatment of Animals (“PETA”) stepped in to provide that assistance in filing the complaint in the Federal District Court for the Northern District of California.

As a prelude to asserting rights in a suit, the plaintiff must have standing.  The district court dismissed the suit for lack of standing, and Naruto through his next friend, PETA, appealed to the Ninth Circuit Court of Appeals.  The court analyzed Naruto’s standing, which can be simplified as “a right to bring suit,” under three standards.  The first issue on appeal is whether Naruto has standing to bring suit based on the status of PETA as a “next friend.”  The next is whether Naruto has standing under Article III of the US Constitution.  And the third is whether Naruto has standing under the Copyright Act (“statutory standing”).

As to the first issue, the appellate court found that PETA did not qualify as a next friend.  PETA’s next friend status requires (a) that Naruto be unable to litigate his own cause due to mental incapacity, lack of access to court, or some similar disability; and (b) PETA must have a “significant relationship” with Naruto, and be truly dedicated to his best interests.  The court found that PETA did not have a significant relationship with Naruto.  In so finding, the court quoted Supreme Court precedent: “however worthy and high minded the motives of ‘next friends’ may be, they inevitably run the risk of making the actual party a pawn to be manipulated on a chess board larger than his own case.” Lenhard v. Wolff, 443 U.S. 1306, 1312 (1979).  This quote is more clearly understood in light of footnote 3 of the Court’s opinion which details (rather scathingly) that PETA had reached a settlement with Slater to pay a quarter of his earnings from the book to charities that protect the habitat of Naruto and other crested macaques in Indonesia.  PETA then tried to withdraw from the appeal to avoid a potential adverse ruling, the Court speculates, that could affect the settlement.  Thus, the Court reasoned that Naruto was a pawn in PETA’s larger objective of monkey habitat protection, and PETA’s objective was not Naruto’s interest in copyrights.  Accordingly, it ruled that next friend status was unwarranted.

In addition, the Court found that Congress had made no provision for next friend suits on behalf of animals, and it was therefore not inclined to recognize such a right.

The Court’s analysis then turned to the Article III of the US Constitution because Naruto’s lack of next friend standing does not necessarily mean that he does not have a “case in controversy” under Article III.  The court already had a prior opinion dealing with appeals by other-than-human species.  In 2004, the Court had issued an opinion regarding the rights of cetaceans (whales, dolphins and porpoises) that were being affected by naval sonar.  In that opinion, Cetacean Community v. Bush, 386 F.3d 1169 (9th Cir. 2004), the Court held that Article III of the US Constitution “does not compel the conclusion that a statutorily authorized suit in the name of an animal is ‘not a case or controversy.’”  This double-negative does not positively state that animals have rights but implies they might have rights, leaving open under what circumstances.  While the Naruto court could not overrule the Cetacean precedent in a three-judge panel, it urged that the precedent be overruled as being in error.  In footnote 7 the Court remarks that there is “no other aspect of federal law,” other than Cetacean that has ever found that animals have Article III standing.

Being in a bind as to Article III standing, unable to overrule, yet unable to ignore the Cetacean precedent, the Court retreated to the more specific standing to sue under the Copyright Act.  Having already indicated its disavowal of Cetacean, Court proceeded, ironically, to rely on a statement from that very opinion to find no statutory standing:

The court in Cetacean did not rely on the fact that statutes at issue in that case referred to “persons” or “individuals.”  Instead, the court crafted a simple rule of statutory interpretation: if an Act of Congress plainly states that animals have statutory standing, then animals have statutory standing. If the statute does not so plainly state, then animals do not have statutory standing.

Court then concluded that since the Copyright Act does not plainly state that animals have standing, they have no standing to bring a copyright-based suit.  In other words, Naruto is out of the courthouse.

The Court was also not at all taken with the role of PETA in the litigation, and regarded its role as self-serving, at best.  (Those interested in the details should read footnote 3 of Naruto v. David John Slater, Blurb Inc. and Wildlife Personalities, Ltd., slip. op. (9th Cir. April 23, 2018))  So, it awarded attorney fees and costs of the appeal to Slater and Wildlife.

Thus ended the tale of cetaceans, monkeys, monkey selfies, “standing” and copyrights.

Disgorgement of Defendant’s Profits as Damages for Trade Secret Misapropriation

By Ted Baroody

Analyzing the monetary harm to a business through misappropriation of one or more trade secrets is fraught with difficulty.   How much does each specific trade secret contribute to the trade secret owner’s profit on each product?  How important was each trade secret to the defendant’s accused product?  What was the development timeline and did the trade secret provide an “early mover” development head-start.  What are the relevant market shares?   Are there commercial substitutes?  Do consumers have a preference?   Is that preference a basis of demand for the product?  Did the defendant sell at a higher margin than the trade secret owner and make more profit per sale that the owner of the trade secret makes?   A relatively rare remedy that addresses some of these concerns is known as “disgorgement” where a judge (not a jury) may award the trade secret owner up to the total profit earned on sales of a product that incorporates the accused trade secret.

Disgorgement was recently analyzed in detail by the United States Court of Appeals for the Federal Circuit in Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., no. 2016-2121, 2208 and 2235 (Fed. Cir. May 1, 2018).   The plaintiff, Texas Advanced Optoelectronic Solutions, Inc., (“TAOS”) and the defendant (“Renesas” f/k/a as its predecessor Intersil Corp. with respect to the conduct at issue) both manufactured ambient light sensors for electronic devices such as mobile phone screens. The sensors detect ambient light and adjust the power to the screen based on the amount of ambient light detected one problem with using a silicon-based photo diode as the sensor is that such a sensor detects both visible and infrared light (such as from an incandescent light bulb).   If the infrared light causes a signal that overestimates the amount of ambient visible light, then an improper screen lighting setting will be generated.

In the early 2000s, TAOS developed and patented a solution based on having two sets of photodiode sensors.  One set was shielded from infrared light.  The second set was not shielded.   The patent disclosed an embodiment with two separate sensor wells comprising one shielded well, and one unshielded well in a 1:1 ratio.  The patent also described a separate embodiment “interleaving” the two types of wells in a repeating pattern in a 3:1 ratio.  TAOS continued to improve the design and eventually introduced a sensor that combined the 1:1 ratio with the interleaving feature.  In the TAOS system, the signals from the two sensors were compared, and the contribution from infrared could then be excluded.  In 2004, Renesas sought to license the technology from TAOS.  TAOS declined but suggested the parties seek a merger instead, and a confidentiality agreement was signed.   The merger negotiations ultimately failed, and the parties subsequently competed in selling sensors to Apple for various cell phone and laptop products.

In 2008, TAOS brought suit against Renesas in federal court in the Eastern District of Texas alleging both patent infringement and misappropriation of trade secrets, and other claims.   TAOS alleged improper use of three trade secrets by Rensas:  (1) financial information of TAOS related to the manufacture of the sensors that Renesas used to prepare a “build vs. buy” analysis which was a basis in part for the decision by Renesas in not merging with TAOS; (2) a “packaging roadmap” specification regarding glass packaging involving its cost (higher than for plastic), allegedly used by [Renesas] in deciding to use plastic packaging instead of glass; and (3) the 1:1 ratio interleaved photodiode well structure, allegedly used by Renesas in modifying its products.  The case was went to trial including both the patent claim and the trade secret claim, although the trade secret claim was based on the Texas common law since the trial predated the more recent enactment of the Texas Uniform Trade Secrets Act as well as the federal Defend Trade Secrets Act (“DTSA”), which could both now be applicable.

At trial the jury awarded:  (1) $73,653.51 as a reasonable royalty for patent infringement (over 98% of the infringing sales were found by the court to be outside the United States and thus not subject to U.S. patent law); (2) $48,783,007 in disgorgement of [Renesas’] profits and $10 million in exemplary damages for trade secret misappropriation; (3) $12 million as a reasonable royalty for breach of contract; and (4) $8 million in lost profits and $10 million in exemplary damages for tortious interference.  With respect to the first claimed trade secret regarding the TAOS financial information, the Federal Circuit on appeal found that use of such information to prepare a “build vs. buy” analysis, was a permissible use by Renesas.  The Federal Circuit also held that because Renesas was already using plastic packaging prior to the exchange of information subject to the confidentiality agreement, that the second category of alleged trade secrets related to the “packaging roadmap” was not protectable as a trade secret.  The Federal Circuit reasoned:  “[Renesas] did not misappropriate information that it already had.  Use of such independently possessed information is no more a misappropriation than is use of one’s ‘independent invention,’ against which ‘trade secret law does not offer protection.’”  Thus, the Federal Circuit concluded that damages for misappropriation of a trade secret could not be awarded based on the first two claimed categories of trade secrets.

With respect to the third category of alleged trade secrets regarding the improved sensor using the 1:1 ratio of “interleaved” shielded and unshielded wells, the Federal Circuit found that such a structure was not disclosed by the TAOS patent, and was subject to protection as a trade secret.   The Federal Circuit affirmed that this photodiode array structure had been misappropriated by Renesas.

The Federal Circuit then moved on to the issue of damages.  This appeals court held that because the jury based monetary damages on misappropriation of all three trade secrets without apportionment, the monetary damages award would be vacated in its entirety and the issue remanded for further factual findings by the district court.  As part of that determination, the Federal Circuit instructed the district court to consider both disgorgement of the defendant’s profits, as well as the date no later than January, 2006 when the 1:1 “interleaved” photodiode array structure was “accessible by proper means” once TAOS released its improved product and Renesas “reverse-engineered” it.

The Federal Circuit cited the “Texas rule” articulated by the Fifth Circuit that:

[o]ne may use his competitor’s secret process if he discovers the process by reverse engineering applied to the finished product.”  Secrecy protection terminated at the end of the period of time it would have taken [Renesas], after [Renesas’] permissible discovery of the photodiode structure, to recreate that structure in its own products.

The appeals court then limited the duration of monetary damages for disgorgement of defendant’s profits to those profits that predate the time of the proper accessibility plus the duration of a head-start period to be determined on remand to the district court.  The Federal Circuit reasoned that a defendant liable for trade secret misappropriation was not entitled to dissolution of an injunction immediately upon publication of the trade secret in a patent application, because such dissolution would give the defendant a “head start” on the competition, and that the conclusion of this “head-start” period ends a trade secret owner’s right to monetary relief for misappropriation.

The Federal Circuit then considered whether the amount of disgorgement of profits was to be determined by a judge or a jury.  TAOS argued to the appeals court that TAOS had a right under the 7th Amendment to the U.S. Constitution to a jury trial on the issue of the amount of disgorgement of Renesas’ profits for trade secret misappropriation based upon the prior availability of such remedy under English common law when the Amendment was adopted.  The court of appeals conducted an exhaustive analysis of the availability of “restitution” (as “disgorgement” is sometimes called) under English law in 1791 and held that such restitution for trade secret misappropriation was not available at common law in England and therefore can today only be awarded by a judge in equity, and not by a jury:

Once claims of trade secret misappropriation came to be accepted in the Nineteenth Century, several decisions quickly recognized that a plaintiff properly asserting jurisdiction in equity could also request incidental monetary relief in the form of disgorgement (restitution) of the defendant’s profits based on the defendant’s past use of the trade secret. E.g., Green v. Folgham, 57 Eng. Rep. 159, 162–63 (Ch. 1823) (defendant undisputedly considered as holding trade secret in trust under the settlement was decreed to account for profits, which would be awarded to plaintiffs; the case was then referred to the courts of law, where a jury would decide the value of the trade secret to award further monetary relief to plaintiffs); see Vickery v. Welch, 36 Mass. 523, 527 (1837) (in a debt action on a bond brought in court of law, recognizing a trade secret as property, deciding that the bond had been forfeited, and stating that the plaintiff “may be heard in chancery [equity] touching the damages”); see also Restatement (First) of Restitution § 136 cmt. a (1937) (“The usual method of seeking restitution is by a bill in equity, with a request for an accounting for any profits which have been received.”). In contrast, we have been pointed to no sound basis for concluding that, for this wrong, the law courts would have awarded disgorgement of the defendant’s profits, notwithstanding that the law courts, through a writ of assumpsit, sometimes awarded such relief for certain other wrongs.

In conclusion, this opinion by the Federal Circuit illustrates three important considerations for parties involved in trade secret litigation:  (1) disgorgement of the defendant’s profits is an available remedy for trade secret misappropriation, but such remedy must be determined by the judge, and not the jury; (2) permissible reverse engineering does not constitute misappropriation of trade secrets; and (3) once a product becomes available to the market and can be permissibly reverse engineered, then monetary damages for misappropriation of the former trade secret(s) is cut off after the expiration of a “head-start” period.

Pre-Litigation Patent Correction Procedures

By Shaukat Karjeker

So, to give your business an “edge,” you invested in a team of innovative professional engineers and scientists.  It paid off: you developed and perfected advanced technologies, as compared to your competitors. But, now they seem to have adopted your technologies to compete with you.  However, you took the precaution to obtain patent rights.  Now might be the time to exercise those rights and protect the return on your R&D investments.

Before proceeding, there are a host of factors to consider, including broader business and market strategies, in addition to the “purely legal issues” posed by filing a patent lawsuit.  As to the legal issues, at the outset one is plainly “due diligence.”  This includes simply taking those steps that a reasonable, prudent businessman would take.  One of these steps is to have a person skilled at reading patent claims, a patent lawyer, take a look at the issued patents, and compare the patent claims with the technology (products, devices, systems or processes) that your competitors are offering. In making a preliminary assessment, a review of the patent claims and the patent file history (the communications with the US Patent Office during prosecution of the patent) is necessary.  From this review, and perhaps additional prior art searches, it might become apparent that it would be necessary, or desirable, to make some changes to the patent claims to improve your chances of success in a patent infringement law suit.

There are several procedures available to the patent owner to make corrections or amendments to an issued patent in the Patent Office.  The selection of the type of procedure depends upon the nature of the change you want to make, and in some cases, the timing of when you want to make the change.  There are essentially four procedures that a patent owner can use to make corrections to an issued patent: (1) certificate of correction; (2) reissue; (3) ex parte reexamination; and (4) supplemental examination.   (There is also a possibility of filing a “disclaimer” to disclaim some patent claims, but it is seldom used and not further discussed here.) Each of these listed four Patent Office proceedings is designed to fit certain circumstances, and patent counsel should carefully consider which is the most appropriate to use.

I Certificate of Correction:

Correction is a relatively simple procedure that can be used to correct typographical errors or those that are of a “clerical” or minor nature.  The errors may arise during the printing process of the patent, and could be the fault of the Patent Office. In that case, the correction can be obtained for no fee.  On the other hand, if the error is one that was introduced by the applicant for patent, then there is a correction fee.  A change that would broaden the scope of a claim is not regarded as “minor,” and other procedures would have to be used, if that kind of correction is desired.  A request for a certificate of correction does not reopen prosecution, and so the Examiner cannot issue Office Actions rejecting the claims over prior art, or for any other reason. The Patent Office either agrees to the changes, or denies the request stating reasons for the denial. 

II Reissue

A reissue proceeding is the most common, and it can be used to amend and correct a patent which is regarded as “wholly or partly inoperative or invalid, through error without any deceptive intention,” by reason of either a defective specification, or drawing, or by reason of the patentee claiming more or less than he/she had a right to claim in the patent.  35 USC § 251.  A reissue proceeding can be used to broaden the scope of the patent claims if the claims were drafted too narrowly, as long as the reissue application is filed within two years of the issue date of the patent. Thus, if the competitor’s product is outside the scope of the claims, then it may be possible to broaden the scope with a reissue application.  If two years have already elapsed, then a reissue cannot broaden the patent claims, but it can be used to correct errors, or narrow the scope of the claims. It is therefore a useful exercise to look at your patent claims just before the passage of two years, to see whether filing for reissue might be necessary, or useful. While narrowing of the claim scope can sometimes be necessary, for example, to avoid newly-discovered prior art, a broadening reissue is likely to be more useful, if not time-barred, when a competitor has attempted to design around your patent.

Importantly, the reissue proceeding re-subjects the patent to an examination, and one can expect that Office Actions may be issued challenging the patentability of the amended patent claims.  Sometimes prior art that was previously cited, and over which the patent was originally granted, might be raised again.

A cautionary factor is that a competitor might have acquired “intervening rights” if the scope of the claims that are allowed to issue from the reissue proceeding is “substantively” different from the scope of the original claims. These intervening rights may cut off the capability to seek damages for past infringement.  35 USC § 252.  However, if the claim language was not substantively changed, and the corrections made related to text in the specification or drawings, for example, then such intervening rights do not arise.  A further caution is that courts have found “equitable intervening rights” in instances where an infringing party made significant investments based on advice that the patent claims were invalid, or not infringed, based on the “errors” in the patent. These equitable intervening rights may cut off future claims for damages, even if the party infringes the reissued patent claims. 

Intervening rights are also a factor to bear in mind when filing for ex parte reexamination, supplemental examination, or post grant review.  Accordingly, as a preliminary matter, careful consideration should be given to the scope of the claims.  Ask: “What scope is necessary to both overcome the “errors” that prompted filing for correction, and also overcome any anticipated prior art that could be cited in the re-prosecution?”  The scope should “thread the needle,” if possible, by avoiding a substantive change that triggers intervening rights, while still ensnaring the accused technology in the claims.  It goes without saying that this requires the skills of experienced patent counsel that appreciates both claim construction in a litigation context, as well as claim interpretation in the US Patent Office.

III.  Ex Parte Reexamination

Ex Parte Reexamination is the only type of reexamination now available after the America Invents Act (“AIA”). In general, anyone can apply for reexamination of an issued patent, at any time during its term.  The requirement for an ex parte reexamination to go forward is that there is a showing of a “substantial new question of patentability.” Such a new question is usually premised on newly-discovered prior art that was not available to the US Patent Office Examiner at the time of the prosecution of the original patent. But, previously considered “old” prior art that the Examiner was aware of can also be submitted as a basis for the question, if it is presented in a new light. The prior art should either anticipate the patent claims, or render them “obvious.” Once filed, the Patent Office must issue a decision within three months on whether to proceed on grounds of the asserted new question of patentability.  (In the first 2 years post grant, claim scope can be enlarged in a reissue proceeding, of course.)

If the reexamination application was filed by the patent owner, then it should be accompanied not only by the prior art, and a detailed explanation of the new question of patentability as to each claim at issue, but also an amended version of these claims that are patentable over the prior art. The patentee can amend the patent claims as long as the scope of the claims is not enlarged. 

Not only does the patent owner has the right to seek reexamination; others can do so as well. So a competitor might use this avenue to try to invalidate patent claims as a defensive tactic to eliminate a risk of a patent infringement lawsuit.  In such an instance, the patent owner must await the Patent Office’s Decision granting the requester’s reexamination application, and can only then file an Owner’s Statement.  This statement can present arguments as to why the claims are valid over the prior art and can also present claim amendments.

As explained above, intervening rights may apply to claims amended during the ex parte reexamination proceeding.  Accordingly, the same precautions apply.

IV  Supplemental Examination

This type of examination was enabled by the AIA, and is therefore relatively new.  Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information believed to be relevant to the patent.”  This standard is much broader than a mere consideration of prior art publications, as in an ex parte reexamination, and includes consideration of whether the claims cover patentable subject matter under 35 USC § 101, or are inoperative or defective under 35 USC § 112 (relating to claim and specification interrelation, and formality issues).  Most significantly, it is the only procedure that can be used to cure potential patent unenforceability based on conduct that might be regarded as “inequitable.” Accordingly, it can be a useful mechanism to remove the potential issue of unenforceability from the infringer’s defenses in litigation.

The Director must conduct the supplemental examination and issue a certificate within 3 months indicating whether there is a new question of patentability, or not.  If there is at least one, the Director will order ex parte reexamination (see, part III above).  This reexamination is conducted under the Patent Office rules for ex parte reexamination, except of course, that issues may include others beyond lack of novelty or obviousness of the claims. The owner has no further right to file a Statement.  But, as the only party able to seek supplemental examination, the owner has the capability to file a wide range of information at the outset along with the request. Again, retaining experienced patent counsel is necessary to ensure that the initial filing is comprehensive and designed to meet litigation goals. 

Conclusion

From the foregoing, it is apparent that if the preliminary due diligence finds issues with the original patent that may make its enforcement more difficult in a court, these issues may be corrected in a variety of ways through proceedings in the Patent Office. The simplest, lowest cost, but most limited in scope, is the use of the certificate of correction process.  The reissue and ex parte reexamination proceedings are more robust and broader in scope of correction available. And, the AIA supplemental examination offers the unique possibility to remove potential patent unenforceability.  Each of these proceedings has its uses, and competent patent counsel should be retained to advise which is the most suitable under the circumstances.