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. 


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.


By Andrew Reed and James Ortega

Imagine your company has developed a great new product, and you have gone through the steps to protect your intellectual property in the product.  Now, a year down the road you are facing an accusation of infringement of a patent that you were not made aware of during the development of your product, but you would have found through even a short and straightforward prior art search performed by your patent attorney.                  

In the fast-paced development found in industry today, it is not uncommon for products to move from development to production in a matter of days or weeks, and not the months or years of previous generations.  However, this does create some issues in the realm of intellectual property, as many of these products never have even a short and straightforward prior art search conducted to find if there are any patents or patent applications that would be an issue for patentability or possible infringement.  In this article we discuss some of the basics of why companies and individuals should run not only an initial prior art search, but then also do periodic searches on their products, technology fields, and on their competitors.

What are Prior Art Searches?

Prior art searches are searches done on the subject matter (scope or technology area) of your idea or invention to discover “prior art,” that is, published documents involving that subject matter or technology field that predate your patent application.  These searches can give you a general knowledge of what others are doing or have done on the same subject matter or in the same technology area.  A prior art search can range from a patent attorney searching for a couple of hours to determine if there is anything exactly like your idea or invention, to the hiring of a professional search firm to find every relevant patent, patent applications, or publications discussing the subject matter of the idea or invention.  The level of searching is often dictated by the intellectual property strategy of the company or individual, and the cost of prior art searches varies among those levels.  If your patent is meant to be a defensive weapon, protecting against others using your idea or invention, then a short search can yield many of the best prior art references and can be supplemented at many points throughout the patent prosecution process.  However, if your patent is intended to be an offensive weapon, then a comprehensive and in-depth prior art search would likely be your best option. The reasoning behind these two options is discussed below.

The Importance of Prior Art Searches to Your Patents 

Prior art searches can be critical in both the patent preparation and prosecution phases, as well as on granted patents if there may be litigation involving such patents.  During the prosecution of a patent application, the inventors, patent attorney, and anyone involved with the application all have a duty to disclose any known material prior art to the U.S. Patent Office.  In practical terms, this means that if you as an inventor have conducted any searches, reviewed any products, or read any articles or other references that discuss the subject matter of the invention, these should be disclosed to the Patent Office.  These disclosures help to ensure that the invention does not already exist, and allow the examiner a more thorough understanding of the invention.  Additionally, if a patent attorney reviews any patents, applications or other references while preparing and developing the scope of coverage for the patent application on your invention, those references must be disclosed as well.  All of these disclosures are helpful because when your patent issues, these disclosures are printed on the face of the patent to inform any future parties what documents were reviewed during examination of the patent, or helped develop the invention or the scope of the patent claims.

Once you patent issues there comes with it a presumption of its validity.  The presumption of validity makes it more difficult to challenge your patent based on the prior art disclosed previously to the Patent Office during the patent prosecution stage, or even additional prior art that is deemed to be merely duplicative of the prior disclosed to the Patent Office.  Thus, the more relevant prior art that is provided during the patent prosecution stage, the stronger your patent will be.

Avoiding Willful Infringement 

In addition to the presumption of validity, the more material prior art that is provided during the prosecution stage of a patent application, the more likely an assertion of willful infringement can be overcome.  The prevention of a finding of willful infringement can come in two different forms.  First, a prior art search can establish if there are any patents or patent applications that cover your invention.  If any of these prior art references are of great concern, in addition to providing insight in how best to adjust the scope of your patent application to avoid such references, a non-infringement opinion can also be provided by your patent attorney if it is believe that the practice of your invention does not infringe those references.  Second, prior art searches can find patents and patent applications that are close but do not completely disclose or cover your idea.  Even prior art references that do not directly cover your idea or invention can help prevent a finding of willful infringement if your patent is issued after the Patent Office has already determined those prior art references do not cover your invention.

Freedom to Operate Searches

Another advantageous use for prior art searches is to determine the scope of the technical field in which you and your company are operating whether or not you have patents of your own.  Fundamentally, a patent grants one the right to exclude others from practicing the patented invention(s), but it does not necessarily grant one the right to practice their own invention(s).  For example, if your patented invention is an improvement over an existing, patented technology, then you may still require a patent license before conducting business within the coverage of that prior existing patent.  Thus, a prior art search may be used to identify the patented areas in a given technology field so that the risk of infringement may be reduced or eliminated.  Moreover, ongoing periodic prior art searches are also advantageous to determine if any new patent filings or granted patents now exist in areas previously free of patent protection.  By staying informed of any new patent filings in your relevant areas of technology, you can continually operate your business with a reduced risk of infringing any such patents.

Additional Uses for Prior Art Searches

Prior art searches may be conducted not only before or during prosecution of a patent application for the reasons discussed above, but also periodically even after your patent has issued.  In some cases, if prior art found during a prior art search after your patent issues raises a concern of its invalidity, a reissue application can be filed to disclose the newly found references to the Patent Office and allow an examiner to review your patent in light of these new references.  While the negative to this approach is a risk that the examiner may find the previous patent invalid because of the newly disclosed prior art, such a result could also prevent the expense associated with attempting to enforce a patent that would eventually have been found invalid.  However, if the reissue patent is granted after review of the newly discovered references, that reissue patent is now typically stronger than the original patent.

Prior art searches can also be used to identify potential infringers of your issued patent.  For example, prior art searches performed after your patent is issued can find potential infringers of your patent by identifying those trying to patent ideas that are very close to your patented idea.  These infringers or potential infringers can then be informed of your patent, which can give rise to a potential claim of willful patent infringement if they continue infringing your patent after such notification.

Prior art searches can also be utilized to determine the patent strategy of your competitors.  For example, a prior art search may show that a competitor always files patent applications in a certain country before filing international patent applications that are then eventually filed in the United States.  After discovering this strategy, a periodic prior art search of patent applications filed by the competitor in that initial country can give you an upper hand in knowing the focus of your competitor’s technology, as well as their ongoing patent strategy.

For all of the reasons discussed above, there are significant advantages for clients to have prior art searches performed before filing a patent application, during prosecution of patent applications, and even periodically after the issuing of your patent.  Moreover, prior art searches can be advantageously conducted even if you have no granted patents of your own in order to determine the scope of patent coverage in certain technology areas.  If you are interested in discussing the advantages of prior art searches or any of the other topics addressed in this article, please call or email us to see how we may be of assistance.

Clarifying the Distinction Between the “Inventive Concept” and “Patentability” Requirements When Determining Patent-Eligible Subject Matter

By James Ortega

In the continuing wake of the U.S. Supreme Court’s attempt in Alice v. CLS Bank to define what is eligible to be the subject matter of a patent, two recent decisions have been issued by the Federal Circuit that provide an important piece of the puzzle the Supreme Court left us with more than two years ago. In the Alice decision, which held that abstract ideas merely implemented using a computer are not eligible for patent protection, the Supreme Court created an “inventive concept” requirement in its two-part test, which requires the finding that a claim either is not directed to an abstract idea, or that if it is so directed, the claims recite “something more” than what has been done conventionally. Although Congress had seemingly removed any “inventiveness” requirement from patent law decades ago, its resurrection in Alice has caused confusion as to what exactly is needed to meet this new “inventive concept” standard. Numerous district courts, as well as the Patent Office itself, have equated an “inventive concept” with satisfying the patentability requirements of novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103. The two recent Federal Circuit decisions help shed light on whether the patent eligibility analysis under § 101 and the Alice decision implicate the novelty determination under § 102 and/or the nonobviousness determination under § 103.

The first of these decisions is Bascom Global Internet Services Inc. v. AT&T Mobility LLC, decided June 27, 2016. The Federal Circuit reversed a Northern District of Texas court’s decision that found patent-ineligible Bascom’s patent claims directed to an internet filtering system located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements. The district court held that “filtering content” is merely an abstract idea, regardless of whether the content being filtered is provided on the internet or through older mediums such as books. However, the Federal Circuit recognized this as yet another reviewing entity overly simplifying a patent’s claims so that it can meet the still-undefined term “abstract idea.” More specifically, the district court had found that the claims at issue did not contain an “inventive concept” under the second step of the Alice analysis.  In so finding, the district court stated that each individual claim element was a well-known, generic computer component or standard filtering mechanism, and that even the combination of these elements was not “inventive” because filtering software and the use of ISP servers to filter content was well known.  In sum, this district court proved once again that most patent reviewing entities still confuse the term “inventive concept” from the Alice decision with “patentability,” which is probably the most glaring problem created by the Supreme Court in the  Alice decision. 

In an analysis that has been asserted by countless patent practitioners since the Alice decision, the Federal Circuit in Bascom condemned the district court’s analysis that it “looks similar to an obviousness analysis under 35 U.S.C. § 103.” This well overdue acknowledgment of the district courts’ (and the Patent Trial and Appeal Board’s) inclusion of an obviousness analysis into step two of the Alice test makes clear that the patent-eligibility inquiry of § 101 does not include the obviousness analysis of § 103.  In elaborating on what is required during an analysis under step two of the Alice test, the Federal Circuit held that step two cannot be satisfied merely by conclusory statements regarding the prior art, explaining that the “inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.”  The court went on to state that “an inventive concept can still be found in the non-conventional and non-generic arrangement of known, conventional pieces.”  Unfortunately, these statements follow the reasoning of the Supreme Court in KSR v. Teleflex, 550 U.S. 398 (2007), which was a decision under the obviousness standard of § 103 and not § 101.

So unfortunately, after condemning the district court for conducting an obviousness-style analysis under the Alice test, the Federal Circuit used reasoning from a prior holding directed only to an obviousness inquiry.  Thus, what was almost a completely positive decision for patent owners, became another decision conflating the “inventive concept” of the Alice decision with an obviousness type determination. While the Bascom holding at least helps patent owners by making clear that a more thorough analysis under step two of the Alice test is required, the Federal Circuit has proven that even it  does not understand that § 103 is a different section of the patent statute from § 101 and thus not only requires a separate analysis, but  also a recognition that obviousness determinations have no place in a § 101 analysis.

The most basic canons of statutory construction make clear that one statute cannot be interpreted in a way that obviates another statute.  Requiring an obviousness inquiry in a § 101 analysis eliminates the need for § 103 and therefore that interpretation cannot be correct.  It would seem then that the search for an “inventive concept” as required by the Supreme Court in Alice is not the search for a “patentable invention” (which includes satisfying §§ 102, 103 and 112, in addition to 101), but is simply the search for an attempt by an inventor to claim a concept that is more than the implementation of an abstract idea on a computer, but still may later be found obvious or not novel.

After the Bascom decision, the Federal Circuit decided McRO Inc. v. Bandai Namco Games America Inc., on September 13, 2016.  McRO provided the opportunity for the Federal Circuit to clarify that its use of the language from the KSR decision in a § 101 analysis should not be interpreted to mean that such a nonobviousness analysis should be used when determining patent-eligibility. 

In McRO, the Federal Circuit reversed a Central District of California court’s decision that found patent-ineligible McRO’s claims directed to automating the matching of audio to three-dimensional computer animation of mouth movements to provide lip-synchronized animation.  The district court analyzed the claims under a “point-of-novelty” style test, and the judge determined the claims’ “point of novelty here is the idea of using rules, including timing rules, to automate the process of generating key frames.”  But because the claims did not identify what those specific timing rules were, the judge found that “the claim merely states ‘an abstract idea while adding the words ‘apply it.’”  In overturning the district court, the Federal Circuit distinguished between eligible and ineligible types of computer-based automation.  Specifically, if automating a previously manual process simply involves programming a computer with the exact same steps as the manual process, such a process will be considered abstract, and thus such claim(s) would be patent-ineligible.  But if, by automating a process on a computer, new steps must be developed that did not exist before, then the process will be considered new and not abstract so long as those specific, new steps are actually recited in the claims.  “It is the incorporation of the claimed rules, not the use of the computer, that improved the existing technological process by allowing the automation of further tasks,” the court found that it was different from the invention in cases like Alice, “where the claimed computer-automated process and the prior method were carried out in the same way.”  And importantly, this is this case even if the computer being used is a “general-purpose computer.” 

So although the McRO decision provided patent practitioners with a valuable decision regarding software-type patent claims, it also included this novelty-style analysis in reaching that holding.  While this appears at odds with the Federal Circuit’s Bascom admonition not to conduct a § 103 obviousness analysis as part of the § 101 eligibility determination, it appears that the court may have been simply using novelty to show that the invention was not an abstract idea. .  If we assume that Bascom did in fact hold that a § 103 analysis should not be done during an Alice test, then it should follow that a § 102 novelty analysis should also not be part of the § 101 analysis under Alice.  And looking more closely at the court’s reasoning in McRO, it did not actually conduct a full § 102 novelty analysis when determining that the software claims at issue included process steps not included in the previous manual approach to the audio matching process.  Instead, the court simply stated that claims at issue required additional process steps necessary for computer automation that were not shown to be part of the prior manual process.  Therefore, the McRO decision could be read to mean that the identification of additional steps required for computer automation of a process, that was not performed in the original manual process(es),  is evidence that the claims do not simply recite an abstract idea.

This interpretation of both Bascom and McRO would comport with a separation of the analyses under the different sections of the patent statute, and thus that a patent owner need not prove that those additional recited steps not found in the prior manual process are also novel and nonobvious under the requirements of §§ 102 or 103.  As a result, patent owners should at the least proceed with process claims that do not simply recite the use of a computer as a tool to automate the same steps of a conventional activity, and instead recite an automated process that has specific additional (or alternative) steps from what had been manually done before.  And importantly, the flip-side of this interpretation should also hold true – that specific limitations in a claim that distinguish the invention from the prior art not only overcome concerns under §§ 102/103, but can provide the additional benefit of making the claims so specific that they should not be considered abstract.  Thus, if those recited additional or alternative process steps are also novel and nonobvious over the prior art, then the likelihood the claims will be found to satisfy § 101 will be further increased.

Who Carries the Burden in IPR—And, Does it Matter?

By Shaukat Karjeker

The Inter Partes Review (“IPR”) proceeding, part of the America Invents Act, sets up a streamlined procedure for any party (“petitioner”) to challenge the validity of the claims of an issued patent, not in a court, but in the US Patent Office, generally at a much lower cost when compared to federal court. An IPR is based on prior art patents and publications that the petitioner argues show that the claimed invention is not novel or is obvious. At the outset, in order for an IPR to be instituted, the petitioner must show a “reasonable likelihood” that it would prevail on a challenge to the validity of at least one claim of the patent. Once the petitioner meets this initial burden of proof, the inter partes “trial” of the patent claims can proceed before the Board.

During the trial phase, both petitioner and patent owner can take limited depositions and develop evidence in support of its position as to the validity or invalidity of a patent claim at issue. When validity of a patent claim is a close question, as is often the case, the outcome might turn on which party carries the burden of proof on invalidity. (The burden of proof is viewed as having two components: a burden of persuasion, and a burden of production of evidence.) Further, an outcome can also turn on whether at some point the burden shifts to the other party.

So it becomes important to identify who carries the burden as this could be outcome-determinative. How the Patent Office assigns the burdens of proof and of production might have been a significant factor in the high rates of patent claims that have been found invalid to date. The Federal Circuit has recently weighed in on the issue, and the subtle but meaningful ruling could have a significant effect in reducing the number of patent claims ruled invalid. (See In re Magnum Oil Tools Int’l, Ltd., (2016 U.S. App. LEXIS 13461, 119 U.S.P.Q.2D (BNA) 1541 (Fed. Cir. July 25, 2016).

This appeal to the Federal Circuit arose from an IPR that was decided in favor of the petitioner, and the patent owner appealed the invalidity of the claims. When the petitioner then withdrew due to a settlement with the patent owner, the Director of the Patent Office then intervened to defend the Board’s ruling of invalidity in the appeal.

The patent owner did not appeal the Board’s institution of the IPR, but instead attacked the finding of invalidity that was based on a shifting of the burden of proof to the patent owner.   The  Director countered that once an IPR was instituted, the Board was justified in shifting of the burden to the patent owner to produce evidence of patentability of the claims.  Putting aside the complexities of the factual details of the case, the legal issues boil down quite simply to:

  1. In an IPR, who has the burden of persuasion on the invalidity of a patent claim and what is the standard?
  2. In an IPR, does the burden of persuasion of invalidity shift to the patent owner when a petitioner has made a prima facie case of invalidity?
  3. In and IPR, who has the burden of production of evidence, and under what conditions does the burden shift to the other party?

As to points (1) and (2), the court ruled that the petitioner has the burden of persuasion that the patent claim is invalid, by “a preponderance of the evidence.”  Moreover, that burden of persuasion never shifts to the patent owner.  It is interesting that in dicta, the court analogized IPRs to patent litigation, where burden shifting does not take place.  In so doing, it distinguished IPR proceedings from patent application prosecution where burden shifting may take place. The court reasoned that in a prosecution context, once the Examiner had made a prima facie case of unpatentability, it is merely a “procedural device” to shift the “burden of production” of evidence supporting patentability to the applicant.  (The Patent Office conceded these points in its Briefs.)

As to point (3), the court ruled that the Patent Office incorrectly asserted that the burden of production shifted to the patent owner once the Board had determined that an IPR should be instituted.  In other words, the Board’s practice of shifting the burden of production of evidence to support patentability to the patent owner after it had found a “reasonable likelihood of success on the merits” in order to institute the IPR, was error. Instead, the court ruled that, because the petitioner has the burden to prove invalidity, by a “preponderance of the evidence”, it is inappropriate to shift the burden of production at the very outset to the patent owner.  As one might imagine, this reversal of the Board’s practice of shifting the burden to the patent owner at the point of institution of the IPR could have a potentially major impact in reducing the number of patent claims that are invalidated.  To that extent, albeit that the Magnum Oil Tools opinion is “procedural,” it could be outcome-determinative in many cases.  

Finally, the court addressed whether the improper shifting of the burden resulted in reversible error. The court examined the Board’s written decision and found that the decision was “replete” with instances where it was clear the Board inappropriately placed the burden on the patent owner by expecting it to explain, and faulting it for failing to explain, why the claims were not invalid.  The court also found that the petitioner failed to show motivation to combine the cited prior art on which the invalidity argument was based.

Interestingly, and perhaps unusually, the Board substituted a reference for one that had been advanced by the petitioner in the combination used to reject the patent claims.  This led the court to rebuke the Board: it was not empowered to make arguments on its own initiative that the petitioner could have raised, but did not raise.  While the Board has “broad authority” in procedural matters in an IPR, it does not have authority to decide unpatentability on theories not proposed by the petitioner.  In short, the Board cannot help the petitioner in its arguments to invalidate a patent.

© Shaukat Karjeker, 2016         

Interview with Hope Shimabuku of Dallas Regional Office of USPTO

Less than a year ago, the US Patent and Trademark Office (USPTO) officially opened the doors to its new Texas Regional Office in Dallas. This regional office provides outreach services for inventors and entrepreneurs in the state of Texas, as well as Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma and Tennessee. David Carstens (DC) recently had the opportunity to interview the Director of the Texas Regional USPTO, Ms. Hope Shimabuku (HS), to discuss the benefits of having a regional office so close to home.

DC: Will the Texas Regional Office be hosting any open house events for patent or trademark applicants to come see where the office is located and learn more about it?

HS: One of the missions of the Texas Regional Office is to provide outreach and to bring events and services to our local stakeholders. We hold workshops, trainings, conferences, roundtables, and events on a regular basis for K-12 students and educators, inventors, entrepreneurs, legal practitioners, and university and corporate stakeholders. For example, the Texas Regional Patent and Trademark Seminar is held at the Texas Regional Office and is a class designed to educate inventors and entrepreneurs about patent and trademark basics. Each month we host onsite Meet the Trademark Experts and Meet the Patent Experts, as well as provide public tours. Some of our upcoming events include an Advanced Patent Seminar and a Texas Regional Patent and Trademark Seminar in Spanish.

DC: Does the Texas Regional Office make it easier for applicants and their counsel to interact with patent examiners?

HS: The Texas Regional USPTO has an examiner interview room where applicants and/or their counsel can meet face-to-face with the eventual 110 examiners who are located at the USPTO Texas Regional Office. They can also meet with any examiner anywhere in the country using our secure video link capability in the examiner interview room.

DC: Will the Texas Regional Office speed up the patent or trademark application process?

HS: One of the strategic goals of the USPTO is to reduce patent pendency, and in order to meet this goal, the USPTO is hiring patent examiners to increase its capabilities. The Texas Regional Office will eventually hire hire approximately 100 new patent examiners, hiring about 25 patent examiners every 4 months.  Currently, the Texas Regional Office has 47 new examiner and 25 new patent examiners, our third class of examiners, will start on September 19, 2016.  Our fourth class of patent examiners will begin in January 2017.

DC: With the Regional Offices opening, will they reduce the cost of filing a patent?

HS: The USPTO assesses its fees based on how much it actually costs for the USTPO to process and examine the patent application.  There have been situations in which we have reduced fees because we have found our cost to be less than what is actually being assessed.

DC: How can a patent or trademark applicant most effectively utilize the Texas Regional Office?

HS: The Texas Regional Office has a number of services available to patent or trademark applicants.  Inventors, entrepreneurs, startups, researchers and others can attend a workshop, training, conference or roundtable at our office. Events are listed on our website at  Applicants can use our interview rooms to connect with patent examiners working at the Texas Regional Office or anywhere else across the country.  Applicants can search existing patents and trademarks on designated workstations using the same software tools that our patent and trademark examiners use.  Additionally, the Texas Regional Office also has a hearing room so that applicants and other interested stakeholders can attend and/or participate in live oral hearings.