19 Sep Visions of victory: Stem cell patent reexamination revisited
On July 18, 2008 the California-based and renamed Consumer Watchdog (hereafter “Watchdog”), reexamination requester of three of related Wisconsin Alumni Research Foundation’s (WARF) stem cell patents, filed a Notice of Appeal in the United States Patent Trademark Office (“the PTO”) relating to one of those patents. That Notice and the concurrent press release brought back to the public eye the stem cell reexamination process which was initiated in July 2006 when Watchdog filed its reexamination requests. This is to update and revisit that dispute.
Watchdog (fka the Foundation for Taxpayer and Consumer Rights) filed two ex parte and one inter partes reexamination requests on July 17, 2006. In ex parte reexamination the requester (Watchdog) gets essentially one clear shot at the patent’s claims while in inter partes reexamination requester can participate throughout the proceeding. Watchdog contended that all claims of WARF’s `806, `780, and `913 stem cell patents were not patentable for various reasons detailed in its requests. The PTO reviewed the requests and found Substantial New Questions of Patentability (SNQOP) with respect to all claims of all three WARF patents. Reexamination was ordered on 9/29/06. Despite the posturing and opposing views of the significance of that finding in the media, PTO statistics suggested that no one should have been surprised by those findings.
On March 30, 2007, the PTO sent out “Office Actions” (as they are called) relating to each of Watchdog’s 3 requests. To no one’s surprise, and consistent with the earlier grant of the reexamination requests, all claims were rejected in all three patents. What was surprising was that none of the claim rejections of the Office Action in the WARF ‘913 patent, i.e. the inter partes reexamination request, were based upon any of Watchdog’s detailed reasons for requesting reexamination. In essence, the PTO examiner had developed his own bases for rejecting the claims of the `913 patent. Thus the `913 inter partes reexamination proceeding became the equivalent of PTO-initiated reexamination, even though no statute or PTO rule permits PTO-initiated inter partes reexaminations. (What the PTO should have done was tell Watchdog that none of its bases for unpatentability were well grounded, withdrawn the grant of the inter partes reexamination request and given Watchdog its money ($8,800) back.)
Nevertheless, prosecution (as it is called) of the three reexamination requests proceeded in parallel. WARF filed its replies in all three proceedings on 5/30/2007. Watchdog responded in the `913 patent reexamination proceeding, because that was the only proceeding where a requester response was permitted. The PTO reviewed all of the arguments and supporting references and, after some cosmetic claim amendments, completely reversed itself in finding that all claims of all three WARF patents were, in fact, patentable. While PTO statistics again suggested that this reversal was not surprising with respect to the two ex-parte reexamination requests, it most certainly was surprising with regard to the inter partes reexamination request of the `913 patent. Since no reliance was placed upon the arguments proposed by Watchdog, the examiner had completely reversed his own analysis of the patentability of the `913 patent claims.
Once the PTO determined that the claims of the two inter partes reexamination requests were patentable, all further proceedings were ended with respect to those two patents. Thus, in due course a reexamination certificate was issued with respect to the `806 and `780 patents confirming the patentability of their slightly amended claims. With regard to the inter partes reexamination of the `913 patent, the appeal process had just begun.
In the `913 inter partes reexamination proceedings either the Watchdog, WARF or both could have appealed the findings of the PTO during initial examination. The appeal process itself is started when the examiner sends out a Right of Appeal Notice (RAN) after examination is complete. Watchdog timely appealed the examiner’s determination that all claims were patentable when it filed the Notice of Appeal discussed above.
The appeal taken by Watchdog was to the PTO Board of Patent Appeals and Interferences (“BPAI”). The BPAI is the first appeal stop from grant or denial of patent claim coverage in inter partes reexamination and is comprised of three experienced patent examiners referred to as Administrative Patent Judges. As such, the `913 patent inter partes reexamination appeal is still within the PTO.
It is significant to note that the appeal taken by Watchdog is to attack the examiner’s finding that the reexamined claims of the WARF `913 patent are patentable. The normal BPAI proceeding is an appeal from an examiner’s rejection of a patent applicant’s claims. The BPAI has vast experience in assessing examiner rejections of claims and essentially no experience in assessing examiner’s allowance of claims in reexamination. The RAN is the document upon which the rest of the `913 inter partes reexamination appeals process will be based.
BPAI inter partes appeal process going forward
The inter partes nature of the reexamination proceeding now becomes more apparent. The examiner and WARF have the task of filing documents defending the conclusions of the RAN. Watchdog has the task attacking the conclusions of the RAN. All three participants will file arguments and analyses, according to a rigorous schedule. The judges of the BPAI will decide all issues and write an opinion. The detailed offense and defense of the RAN will start when Watchdog files its brief on appeal on September 18, 2008. WARF will then reply on October 18, 2008, the examiner then files his paper and so it goes.
After the BPAI renders its decision it is likely that the losing party will file what is called a Request for Rehearing which also provokes the filing of opposing and counter-opposing papers and another decision by the BPAI. Thus the lengthy nature of the appeal process within the PTO becomes more apparent.
Regardless of the decision of the BPAI and assuming the decision, whatever it is, is maintained after a Request for Rehearing, either WARF or Watchdog can appeal to the Court of Appeals for the Federal Circuit. As of this writing, the Federal Circuit has not decided a single inter partes reexamination appeal from the PTO despite the fact that the inter partes reexamination statute is nearly 10 years old. Moreover, to a preliminary search there are also no published BPAI decisions relating to inter partes reexamination proceedings. Both WARF and Watchdog are hunting in unsurveyed forests.
While predicting what the PTO will do in any given circumstance is always risky, I continue to predict at least the following: 1) the BPAI’s initial decision on Watchdog’s appeal will be rendered sometime late 2009; 2) Requests for Rehearing will be filed and the initial BPAI decision will be affirmed in the second quarter of 2010; 3) The overall outcome will be that the BPAI will affirm the examiner’s determination that claims 1-3 are patentable. My reason for stating that is the examiner’s reasons for reversing the initial rejection in the RAN seem to be technically and legally well-founded and the Office likes to affirm its prior decisions; 4) Watchdog will likely appeal to the Court of Appeals for the Federal Circuit. That is, after all, the first opportunity for Watchdog to have its arguments considered outside the patent-friendly and somewhat defensive PTO. The dispute will then end in late 2011 with the patentability `913 of the patent claims confirmed. A Certificate of Reexamination then will issue in 2012.
Despite the “special dispatch” requirement of the reexamination statute the earliest this process through the Patent and Trademark Office can be completed is likely at least 1-1/2 years from now. A Federal Circuit Appeal will take another one to two years thus placing final resolution of the inter partes reexamination proceeding in late 2011. Note that the `913 patent will expire in 2015. Note further that none of the argument “dogs” proposed in Watchdog’s reexamination request were ever seen “to hunt” even though a five-year dispute developed.
One of the proposals in the recent patent reform legislation was to eliminate the inter partes reexamination statute. The statute in its present form is only useable by parties interested in harassing a patent owner that do not make any products. Watchdog nicely illustrates the concept.
Please visit www.whdlaw.com for complete citations and short summaries of the authorities noted in italics above.
The opinions expressed herein or statements made in the above column are solely those of the author, and do not necessarily reflect the views of the Wisconsin Technology Network, LLC. They should not be attributed to Whyte, Hirschboeck, Dudek, SC or any of its clients.
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The opinions expressed above are those of Grady Frenchick and should not be attributed to Whyte Hirschboeck Dudek S.C. or any of its clients, including WARF.