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Author Topic: Using Interference as a pre-litigation tool; any way to push obviousness?  (Read 1465 times)

nmayweather

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I'm looking at minimizing any post-issue litigation by aggressively pushing for Interferences whenever possible. I've been going through several hundred potential IP infringements (based on USPTO citations to my filing, and 2 known competitors) to see if there is any potential infringement. I've found a 4, which I've categorized into 3 buckets so far:

1. Clear Interference. The claims interfere, the examiner missed references in mine explicitly teaching their innovations. This could possibly be resolved without depositions.

2. Arguable Interference. They use more technical terms; this would likely be a headache to get through, as experts would offer their input in depositions.

3. Infringing Improvements. They patented an improvement to my method, teaching a new limitation/additional step.

I'm likely going to suggest an Interference on bucket #1, and consider what to do about #2 while the prosecution clock is stopped (assuming I stop it with bucket #1).

I don't think there is any way to handle the "Infringing Improvements" bucket outside of a civil trial or one of the (expensive) post-issue reviews.  Is that correct?

Speaking very vaguely to give this context:

The particular invention covers "A>(B>C>D)>E" where the influence of elements B,C,D may each be configured.  To overcome a rejection on my prior art, the other party added a limitation where the influence of subelements within B may each be independently configured.  This was not recited in my claims or disclosure because it was "common sense" (as in, someone who is not even skilled in the art would know and expect that). The original attorney and I only focused on the "very new and innovative" improvements to the field, which were C&D, and noted their influence could vary and their subelements could have varied influence as well.  Explicitly stating the obvious variations within B, which is both common sense, obvious, expected, and was the status-quo of the field and related arts is one sentence which I regret not writing.
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ThomasPaine

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No idea what you are talking about or asking.

Infringement is not determined by looking at other's, including your competitor's, filings.  A patent is not infringed by another patent or published application.

You do realize there is no interference procedure available for applications filed after March 16, 2013?

If you think any of these "several hundred" or "4" issued patents or published applications are anticipated by or obvious from your patent, you can initiate a post grant proceeding (IPR or PGR depending on your ability to meet the requirements of either).  But I can't see any way you can have an interference declared.

"The particular invention covers "A>(B>C>D)>E" where the influence of elements B,C,D may each be configured.  To overcome a rejection on my prior art, the other party added a limitation where the influence of subelements within B may each be independently configured.  This was not recited in my claims or disclosure because it was "common sense" (as in, someone who is not even skilled in the art would know and expect that). The original attorney and I only focused on the "very new and innovative" improvements to the field, which were C&D, and noted their influence could vary and their subelements could have varied influence as well.  Explicitly stating the obvious variations within B, which is both common sense, obvious, expected, and was the status-quo of the field and related arts is one sentence which I regret not writing."

If other party's patent is obvious, because their added limitation regarding B was "common sense, obvious, expected, and was the status-quo of the field and related arts" then you should have no problem finding objective evidence of that, which in combination with your patent would render the other party's claim obvious.  But if you want to invalidate the other party's claim then you need to either file an ex parte reexam or a post-grant proceeding to present that evidence and argument.
« Last Edit: 03-14-18 at 10:15 am by ThomasPaine »
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nmayweather

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Quote
You do realize there is no interference procedure available for applications filed after March 16, 2013?

Yes. The Post-Allowance Application has a 2008 filing date, and claims priority to 2007.  It is eligible for Interference, and the restricted claims going into the divisional should be eligible as well.

Quote
No idea what you are talking about or asking.

Ok, I'll give this another shot...

I'd like to minimize costs of fighting with competitors by doing as much with Interference as possible. 

The application has been cited as prior-art by examiners in around 300 other prosecutions.  I read all those claims, and found 3 applications that were troubling (the 4th is a known competitor).  From everything I've read, and conversations I've had, there are several ways to challenge the validity of other's Patents - each with a different cost structure.  Here are the 3 that I am focused on:

Cheapest - simple interference.  If there are conflicting claims and the argument/evidence suggests USPTO's Interference Specialists would simply rule early on in my favor and declare the other item unpatentable.  Potentially no USPTO fees.

Moderate - complex interference.  If there are conflicting claims and the argument/evidence suggests this will progress into advanced Interference stages where there will be depositions and the involvement of experts.  Moderate legal fees. Potentially moderate USPTO fees.

Expensive - post-grant procedures (ex parte, etc).  High USPTO fees, high legal fees.
 
Based on that, I've been bucketing the other Patents into groups that correspond to the complexity and cost.

Using an example of my Allowance being for "a specific type of truck", two issued patents (same inventor/assignee; initial and a divisional) used as their base independent claim "a vehicle with 4 wheels" then fully defined my truck in a dependent claim.  The examiner in those applications cited one paragraph of my specification as prior art; the applicant argued that paragraph did not fully disclose their version and listed several improvements which persuaded the examiner to allow it. However, I explicitly enumerated the same exact improvements while describing another embodiment of the invention in another paragraph - the examiner just missed that better reference. 

I've grouped this under "Clear Interference", because this competitors "claims" read directly onto my allowed "claims" and the plain language in my specification fully discloses their claims and the majority of their disclosure. This is simply the examiner missing the correct reference in my specification.

Pushing for that "Clear Interference" should "stop the clock" before Issue Fee payment and allow me to decide if I want to deal with the "moderate costing" competitor.  We've had a IP skirmish before on related trademarks, so I've been watching their IP filings.  They claimed/disclosed my invention using different terminology, and while I am confident I would win - I am also confident they will try to wear me down with legal fees and filings.

Finally I have that fourth item, the ABCDE where the competitor's "improvements" to my invention were simply the obvious status-quo bits that I did not bother to list.

So my question was aimed at this... is there any mechanism with which I can use my eligibility for Interference proceedings to argue obviousness against the third competitor, as it should be much cheaper and more beneficial to do so now than with a challenge after being issued my patent.  Obviousness on it's own isn't grounds for an Interference, and adding their exact limitation to my claims would constitute new matter. For example, they claim the 4 wheels of my truck may be made of solid or inflatable rubber while I did not address that because it is commonly known.

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MYK

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Please give short, non-essay, answers to the following:
1. Who filed first, you or the other party?
2. What years were the filings?
3. Has your patent issued?
4. Have their patents issued?
5. In terms of cost, are you planning on going through this all by your lonesome or will you be hiring someone?
6. You do realize that it's going to cost you in the vicinity of $20K for a brief if you hire someone?

Infringement is not determined by looking at other's, including your competitor's, filings.  A patent is not infringed by another patent or published application.
Well, he did write "interference", not "infringement", so there's that.  Last I looked, which admittedly has been a while since Obama did away with them in his signature Anti-Inventors Act, an interference was between two applications or an application and a recently issued patent.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

ThomasPaine

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"Cheapest - simple interference.  If there are conflicting claims and the argument/evidence suggests USPTO's Interference Specialists would simply rule early on in my favor and declare the other item unpatentable.  Potentially no USPTO fees.

Moderate - complex interference.  If there are conflicting claims and the argument/evidence suggests this will progress into advanced Interference stages where there will be depositions and the involvement of experts.  Moderate legal fees. Potentially moderate USPTO fees.

Expensive - post-grant procedures (ex parte, etc).  High USPTO fees, high legal fees."

No idea how you arrived at this.  Interferences are not cheap.  There are relatively few firms with the expertise to conduct one and they are not cheap.  And interferences take a long time to conduct. 

While IPR's have high USPTO fees, they are comparatively less expensive than paying your interference attorneys for years and years.

Not sure how you got this idea of "using interference as a pre-litigation tool" but it's a terrible idea.  A boondoggle in every respect.
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eighteighteight

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Your cheapest option is to simply cite the prior art. The patent will not be rexamined, but the prior art will show up in the file. If you think it is really killer and clear that the other party would not expect any chance of success over the prior art you found, then just citing it may be sufficient to prevent them from coming after you.

Your second cheapest option is probably ex-parte re-examination. The downside of this is you are relying on the examiner, as once you submit the art you are out of the process. You are looking at maybe 15-30k.

Your third cheapest option is either (a) wait for a conflict, then file for a declaratory judgement in a courthouse, OR (b) File an IPR.

Interference is probably the most expensive option you have.
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nmayweather

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Not sure how you got this idea of "using interference as a pre-litigation tool" but it's a terrible idea.  A boondoggle in every respect.

Answer: Speaking to Associates while my Partner was away.

Your cheapest option is to simply cite the prior art. The patent will not be rexamined, but the prior art will show up in the file. If you think it is really killer and clear that the other party would not expect any chance of success over the prior art you found, then just citing it may be sufficient to prevent them from coming after you.

I am the prior art.

Let me explain this generally:

I filed 2008 claiming a 2007 priority date.
They filed 2010.

I claimed/disclosed "A specific method of making a widget from 2 parts, regardless of the origin of two parts." that invented a way to adapt unknown parts to the process.

After a decade of arguing with the Examiner (multiple 6way combinations, etc) I was allowed "A specific method of making a widget from 2 parts, when at least 1 part was previously unknown."  I believe my application has over 50 prior art citations.

Before my allowance, one competitor (Clear interference) claimed the abstract idea of "Making a widget from 2 parts".  My application was cited by their examiner as Prior Art, with a 5 paragraph example highlighted.  They overcame the objection, to allowance, stating the given example showed two known parts and did not teach the improvement of adapting  previously unknown parts. 

While that particular reference in my application showed 2 known parts, there were over 30 references in my application specifically stating the same process works with previously unknown parts, a section detailing examples of how unknown parts are adapted, illustrations supporting unknown parts, and even details disclosing multiple methods of obtaining the unknown parts to adapt.  The abstract and first-paragraph of the specification in my disclosure both state my invention was designed with the explicit purpose of adapting previously unknown parts.

The other party was allowed their overly broad independent claim that encompasses my invention.  They then filed a divisional application on the actual invention they described in their disclosure, which is a specific method of making a widget from a known and unknown part, where the unknown part is automatically obtained and adapted in a specific manner.  Their divisional actually is an innovation and has nothing to do with my claims or invention I think their first filing was expected to narrow-down onto those claims, and they just lucked out with a lazy examiner.

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ThomasPaine

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"Answer: Speaking to Associates while my Partner was away."

You need to fire your attorneys and hire some competent ones.  ASAFP.

"After a decade of arguing with the Examiner (multiple 6way combinations, etc) I was allowed..."

See above.

If your competitors are infringing your patent(s), you need to sue them for infringement.  As I explained to you before, their patent(s) do not "infringe" your patent.  That's not how infringement works.

As has also been explained to you, interference is a very expensive and time consuming process that requires you to hire from a relatively few firms who can handle the matter.  It's clear that your current lawyers have no idea what they are doing.

But the primary reason this is a colossally stupid idea is that even if you win the interference (which you have less than a 0.00000000000000000000000000000001% of getting declared), what then?  What is that going to get you?  What are you going to do with that victory?  It's not going to stop any infringement.  It's not going to get you damages, or an injunction against your competitors infringing your patent(s).

If your competitor(s) are infringing your patent(s), FILE AN ACTION FOR PATENT INFRINGEMENT.  But first, fire your current lawyers and hire some competent ones.

Good gravy.
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midwestengineer

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You need to fire your attorneys and hire some competent ones.  ASAFP.

This.
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still_learnin

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I don't think there is any way to handle the "Infringing Improvements" bucket outside of a civil trial or one of the (expensive) post-issue reviews.  Is that correct?

A civil trial is the only way to handle infringement. Period.

nmayweather, although you indicate that you've found infringement, it seems you're very focused on your competitor's patents rather than your competitor's products. What's your thought process here? Are you more concerned about your competitors licensing [your] invention than you are about them selling a product that includes your invention?
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

nmayweather

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nmayweather, although you indicate that you've found infringement, it seems you're very focused on your competitor's patents rather than your competitor's products. What's your thought process here? Are you more concerned about your competitors licensing [your] invention than you are about them selling a product that includes your invention?

Yes, this is a licensing concern.

I also know that an infringement suit is over the product, not the patent.

My allowed patent application relates to backend computer server systems that run "in the cloud" and enables or significantly improves various software and integrated hardware products.  The competing Patents which feature claims that are overlapping-with/derived-from/more-generic than mine all involve similar embodiments.

My competitors' potentially infringing products all run in the cloud and there is no way for me to independently determine if they are utilizing my innovation and infringing on my claims - I do not have access to their product to analyze it, no one does.   These companies are not selling my claimed invention to consumers, but using it within their own systems to power their own products (which are sold).

The competing patent filings are what I am using to identify who is potentially leveraging the innovation I invented first.  I use  the USPTO filings to identify the companies & named inventors, then search for public presentations and corporate announcements related to the patent filings, the general area of invention, or the named inventors to determine if they are making a public disclosure of utilizing my allowed claims in production or their consumer facing products.  This has resulted in lists of companies that definitely use technology which infringes on my claims in their products, and (larger) lists of companies who are simply suspect or definitely do not.

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