On Sept. 30th, Harold C. (Hal) Wegner gave a talk on current developments that emphasized the importance of inter partes reexamination, particularly as a weapon of patent destruction. His opinion, summarized by me, is that KSR is increasingly being applied to biotech claims by Examiners. Applicants then are forced to put in declarations arguing secondary factors and to argue criticality in order to get claims allowed. Requestors are aware that, during inter partes reexamination at the PTO level, 60% of patents have all their claims cancelled and 80% have independent claims cancelled. Attacker-requestors will put in declarations to show that “everything was expected.” If the Examiner and the Board support the attacker, patentee is dead since, if the attacker put in substantial evidence, the Federal Circuit will give deference to the PTO finding. Also, if the attacker argues that a claim should be interpreted so as to read on the prior art, claim interpretation will be an open question before the Federal Circuit, who reviews claim construction de novo as a question of law.
On the other hand, Hal noted that, in the past, almost no merits appeals ever reached the Board from reexamination proceedings. This is in part because it is easy for either party to slow the proceedings nearly to a standstill by submitting boxes of prior art (I have seen a patentee in litigation do this) or by introducing hundreds of claims. Hal also noted that, as of 2002, no reexaminations had been concluded by appeal to the Federal Circuit. If Director Kappos manages to shorten the appeal process at the Board, as by moving Examiners from the corps to the Board, in the fairly near future all of these patent-killing mechanisms could rise in prominence.