IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`NADER ASGHARI-KAMRANIand
`KAMRAN ASGHARI-KAMRANI,
`
`Plaintiffs,
`
`Vv.
`
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
`
`Defendant.
`
`NomeNeeNeeeeeeeeeeee”ee”eeee”ee”ee”Se”
`
`Civil Action No. 2:15-cv-00478-RGD-RJK.
`
`EXPERT REPORT OF Q. TODD DICKINSON,ESQ.
`February 28, 2017
`
` Blee |i
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`. TODD DICKINSON,Esq.
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`DAT
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`CONTAINS INFORMATION DESIGNATED HIGHLY CONFIDENTIAL
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`QUALIFICATIONS ........................................................................................................... 1
`
`III.
`
`SCOPE OF REPORT .......................................................................................................... 5
`
`IV.
`
`LEGAL PRINCIPLES AND RELEVANT PATENT OFFICE PRACTICE ..................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Legal Standard for Inequitable Conduct ................................................................. 5
`
`Continuation and Continuation-in-Part Applications ............................................. 7
`
`Non-Publication Request Certification ................................................................... 9
`
`Understanding of “Delay” in PTO .......................................................................... 9
`
`Duty to Investigate ................................................................................................ 10
`
`PTO pro se assistance program ............................................................................. 12
`
`Regularity of Mistakes in Patent Prosecution ....................................................... 13
`
`V.
`
`RECITATION OF RELEVANT FACTS ......................................................................... 13
`
`A.
`
`B.
`
`C.
`
`D.
`
`Prosecution of the ’432 Patent .............................................................................. 15
`
`Post-Issuance Filings Regarding the ’432 Patent.................................................. 17
`
`Prosecution of the ’538 Patent .............................................................................. 24
`
`Non-Publication Requests ..................................................................................... 27
`
`VI.
`
`INEQUITABLE CONDUCT ALLEGATIONS CONCERNING THE
`“CONTINUATION” MISLABELING ............................................................................ 28
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Opinion Regarding Alleged But For Materiality of the Mislabeling .................... 28
`
`Opinion Regarding Alleged Evidence of Intent of Bijan Tadayon....................... 30
`
`Opinion Regarding Alleged Evidence of Intent of Veronica-Adele Cao ............. 32
`
`Opinion Regarding Alleged Evidence of Intent of Michael P. Fortkort ............... 33
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`Ultimate Opinion on Intent ................................................................................... 34
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`VII.
`
`INEQUITABLE CONDUCT ALLEGATIONS CONCERNING ALLEGATIONS
`OF “INTENTIONAL DELAY” REGARDING THE CORRECTION OF THE
`“CONTINUATION” MISLABELING ............................................................................ 35
`
`VIII.
`
`INEQUITABLE CONDUCT ALLEGATIONS CONCERNING ALLEGATIONS
`OF “INTENTIONAL DELAY” REGARDING THE PRIORITY CLAIM TO
`THE ’400 APPLICATION IN THE CORRESPONDING CBM PROCEEDINGS ........ 37
`
`A.
`
`B.
`
`C.
`
`Opinion Regarding “Entire” Delay ....................................................................... 37
`
`Opinion Regarding Mr. Kim’s July 27, 2016, Motion ......................................... 38
`
`Opinion Regarding Mr. Kim’s August 30, 2016, Renewed Petition .................... 39
`
`IX.
`
`INEQUITABLE CONDUCT ALLEGATIONS CONCERNING THE NON-
`PUBLICATION REQUEST ............................................................................................. 41
`
`A.
`
`B.
`
`Opinion Regarding Materiality ............................................................................. 42
`
`Opinion Regarding Intent ..................................................................................... 44
`
`X.
`
`OTHER ACTIVITIES ALLEGED TO BE RELEVANT TO INEQUITABLE
`CONDUCT ....................................................................................................................... 45
`
`A.
`
`B.
`
`Mr. Nienstadt’s Corrective Filings in the ’538 Application ................................. 45
`
`Alleged Failure to Inform PTO of USAA’s Invalidity Allegations ...................... 46
`
`XI.
`
`OTHER MATTERS.......................................................................................................... 47
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`CONTAINS INFORMATION DESIGNATED HIGHLY CONFIDENTIAL
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`I.
`
`INTRODUCTION
`
`1.
`
`I, Q. Todd Dickinson, have been retained by Nader Asghari-Kamrani and
`
`Kamran Asghari-Kamrani (“Plaintiffs”) as an expert witness in the above-referenced matter.
`
`2.
`
`I have been asked to provide information, opinion and expert testimony on
`
`practices and procedures governing the prosecution and examination of patent applications in
`
`the United States Patent and Trademark Office (“USPTO” or “PTO”) relevant to and at the
`
`time of the prosecution of United States Patent No. 8,266,432 (“the ’432 patent”). I have also
`
`been asked to address certain opinions and testimony made by an expert witness retained by the
`
`Plaintiff in this action, Mr. Nicholas P. Godici, relating to the same.
`
`3.
`
`This report is submitted pursuant to Rule 26(a)(2) of the Federal Rules of Civil
`
`Procedure. I reserve the right to supplement or amend this report pursuant to Rule 26(e) if
`
`additional information that affects my opinions becomes available.
`
`II.
`
`QUALIFICATIONS
`
`4.
`
`I am currently a Senior Partner in the law firm, Polsinelli, PC, and have worked
`
`as an attorney, U.S. government official and policy leader in the field of intellectual property
`
`(“IP”) for almost 40 years. I have served as an expert witness or declarant more than 15 times.
`
`5.
`
`I have previously served in the USPTO, beginning as a Senior Advisor to the
`
`U.S. Secretary of Commerce and culminating as the Under Secretary of Commerce for
`
`Intellectual Property and Director of the United States Patent and Trademark Office (USPTO),
`
`having been nominated by the President of the United States and confirmed by the U.S. Senate.
`
`As Director of the USPTO, I was the Chief Executive Officer of an agency of over 8,000
`
`employees and a budget of approximately $1.5 billion. I was also the principal advisor to the
`
`President of the United States on all aspects of intellectual policy and practice.
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`6.
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`I reported directly to the Secretary of Commerce and was also responsible for
`
`the management and direction of all aspects of the work of the USPTO, including patent
`
`operations. Among my responsibilities were the oversight and final say on the drafting and
`
`implementation of all patent examination policies, regulations, and guidelines.
`
`7.
`
`Both as Director and in private practice, I have testified before Congressional
`
`committees of both the House and Senate on various patent and USPTO related issues.
`
`8.
`
`After leaving the USPTO, I joined the Washington, D.C. law firm of Howrey
`
`Simon Arnold & White, where I served as co-chair of its intellectual property practice and
`
`represented numerous companies in intellectual property matters, remaining there until 2004.
`
`Among other work, I acted as an expert witness in a number of matters, and routinely provided
`
`opinions on client matters referred to me.
`
`9.
`
`I then served as the Vice President and Chief Intellectual Property Counsel of
`
`the General Electric Company from 2004-2008, having corporate-wide responsibility for all IP
`
`matters, which included oversight of the process and procedures used by a major corporation in
`
`the preparation, filing and maintenance of patents and patent applications, oversight of patent
`
`litigation and appellate matters, and development and implementation of intellectual property
`
`policy matters.
`
`10.
`
`Until recently, I served as Executive Director of the American Intellectual
`
`Property Law Association (AIPLA), which is an independent bar association specializing in
`
`intellectual property matters. AIPLA has approximately 15,000 members and has been in
`
`existence for over 100 years. As Executive Director, I was the Chief Executive Officer, having
`
`overall management responsibility for the organization, including overseeing advocacy matters,
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`policy development and implementation and day-to-day operations, reporting to the Board of
`
`Directors.
`
`11.
`
`Prior to serving in the United States government, I was with the firm of Dechert
`
`Price & Rhoads from 1995 until 1997, where I practiced intellectual property law on behalf of a
`
`wide range of clients. From 1990 until 1995, I was Chief Intellectual Property and Technology
`
`Counsel for Sun Company, Inc., (now Sunoco, Inc.) responsible for all IP matters, including the
`
`filing and prosecution of patent applications, and the evaluation and analysis of the patents and
`
`patent applications of others.
`
`12.
`
`Prior to joining Sun, I served as Counsel to Chevron Corporation from 1981 to
`
`1990, as a patent and trademark lawyer with Baxter Travenol Laboratories (now Baxter
`
`International) in Deerfield, Illinois, and began my career as an associate with the law firm of
`
`Blenko, Buell, Ziesenheim and Beck, Pittsburgh, PA.
`
`13.
`
`I spent the first part of my career as a patent practitioner, preparing, filing and
`
`prosecuting patent applications for a variety of clients, primarily in the chemical arts, and have
`
`over that time prepared and prosecuted hundreds of patent applications before the USPTO.
`
`14.
`
`I received a B.S. degree in Chemistry from Allegheny College in 1974, and a
`
`J.D. from the University of Pittsburgh Law School in 1977. I am a member of the bars of
`
`Pennsylvania, Illinois, California, and the District of Columbia, and I have been licensed to
`
`practice before the USPTO since 1978.
`
`15.
`
`I am the author or co-author of a number of publications in the field of IP law
`
`and have spoken frequently on intellectual property topics. A list of such publications and
`
`speeches is included in my curriculum vitae, attached hereto as Exhibit A.
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`16.
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`I have also lectured or taught intellectual property course work at George
`
`Washington University Law School, Georgetown University Law School, George Mason
`
`University Law School, University of Pittsburgh School of Law, and Tokyo University.
`
`Additionally, I serve on the Board of Trustees of the University of Pittsburgh School of Law
`
`and on the IP Advisory Board of the George Washington School of Law. I am an inductee of
`
`the Intellectual Asset Management’s Intellectual Property Hall of Fame, have been named
`
`“One of the Most Influential People in Intellectual Property” six times, and the “Q. Todd
`
`Dickinson Intellectual Property Inn of Court” in Pittsburgh, PA, is named in my honor.
`
`17.
`
`In the course of my work as an expert, I have opined on a variety of matters,
`
`including patent office practice; industry practice in the area of patent law; willful infringement
`
`issues; patent enforceability issues; patentability issues; and intellectual property litigation and
`
`settlement strategies.
`
`18.
`
`A list of cases in which I have testified as an expert at trial or by deposition in the
`
`last four years is attached as Exhibit B.
`
`19.
`
`I am being compensated for my time related to this case at my normal consulting
`
`rate of $675 per hour plus expenses. No part of my compensation is contingent upon the
`
`outcome of this case or the nature of my testimony.
`
`20.
`
`In reaching the conclusions stated in this report, I have relied upon my own
`
`experiences in intellectual property law practice, drafting and prosecuting patents, IP public
`
`policy, and patent office management as explained above and in my CV. I have also reviewed
`
`and considered the materials listed in Exhibit C, including the expert reports of Mr. Nicholas P.
`
`Godici, as well as cases and other documents referenced herein.
`
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`III.
`
`SCOPE OF REPORT
`
`21.
`
`I have been asked by counsel for Plaintiffs Nader and Kamran Asghari-Kamrani
`
`to consider and respond to certain aspects of the Expert Report of Nicholas P. Godici and to
`
`provide other observations and opinions regarding patent office practice and the inequitable
`
`conduct allegations asserted by counterclaimant USAA.
`
`IV.
`
`LEGAL PRINCIPLES AND RELEVANT PATENT OFFICE PRACTICE
`
`A.
`
`22.
`
`Legal Standard for Inequitable Conduct
`
`Ever since the seminal Court of Appeals for the Federal Circuit (CAFC) en banc
`
`opinion in Therasense v. Becton & Dickinson, inequitable conduct has been significantly
`
`narrowed as a defense to infringement or for other purposes, and has been found to have
`
`imposed a very high burden on the party asserting it.
`
`23.
`
`As Chief Judge Rader stated in Therasense:
`
`[C]harging inequitable conduct has become a common litigation
`tactic. One study estimated that eighty percent of patent
`infringement cases included allegations of inequitable conduct.
`Committee Position Paper at 75; see also Christian Mammen,
`Controlling the “Plague”: Reforming the Doctrine of Inequitable
`Conduct, 24 Berkeley Tech. L.J. 1329, 1358 (2009). Inequitable
`conduct “has been overplayed, is appearing in nearly every patent
`suit, and is cluttering up the patent system.” Kimberly-Clark 23
`THERASENSE v. BECTON Corp. v. Johnson & Johnson, 745
`F.2d 1437, 1454 (Fed. Cir. 1984). “[T]he habit of charging
`inequitable conduct in almost every major patent case has
`become an absolute plague. Reputable lawyers seem to feel
`compelled to make the charge against other reputable lawyers
`on the slenderest grounds, to represent their client’s interests
`adequately, perhaps.” Burlington Indus., Inc. v. Dayco Corp.,
`849 F.2d 1418, 1422 (Fed. Cir. 1988); see also Abbott Labs. v.
`Sandoz, Inc., 544 F.3d 1341, 1358 (Fed. Cir. 2008); Multiform
`Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1482 (Fed. Cir.
`1998); Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 960 (Fed.
`Cir. 1997); Allied Colloids Inc. v. Am. Cyanamid Co., 64 F.3d
`1570, 1578 (Fed. Cir. 1995); Molins, 48 F.3d at 1182. Left
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`unfettered, the inequitable conduct doctrine has plagued not
`only the courts but also the entire patent system.”
`
`649 F.3d 1276, 1290 (Fed. Cir. 2011) (emphasis added.
`
`24.
`
`The legal standard to prove inequitable conduct as stated in Therasense, is:
`
`To prevail on a claim of inequitable conduct, the accused infringer
`must prove that the patentee acted with the specific intent to
`deceive the PTO. …A finding that the misrepresentation or
`omission amounts to gross negligence or negligence under a
`“should have known” standard does not satisfy this intent
`requirement… “In a case involving nondisclosure of information,
`clear and convincing evidence must show that the applicant made a
`deliberate decision to withhold a known material reference.
`
`Therasense, p. 23.
`
`25.
`
`Therasense further provides that:
`
` [A] district court may not infer intent solely from materiality.
`Instead, a court must weigh the evidence of intent to deceive
`independent of its analysis of materiality. Proving that the
`applicant knew of a reference, should have known of its materiality,
`and decided not to submit it to the PTO does not prove specific
`intent to deceive.
`
`Therasense, p. 25.
`
`26.
`
`Therasense further provides that:
`
`This court holds that, as a general matter, the materiality required
`to establish inequitable conduct is but for materiality. [For
`example, w]hen an applicant fails to disclose prior art to the PTO,
`that prior art is but-for material if the PTO would not have allowed
`a claim had it been aware of the undisclosed prior art.
`
`Therasense, p. 27.
`
`27.
`
`Therasense further provides that:
`
`“Because direct evidence of deceptive intent is rare, a district court
`may infer intent from indirect and circumstantial evidence.”
`Larson Mfg. Co. of S.D., Inc. v. Aluminart Prods. Ltd., 559 F.3d
`1317, 1340 (Fed. Cir. 2009). However, to meet the clear and
`convincing evidence standard, the specific intent to deceive must
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`be “the single most reasonable inference able to be drawn from the
`evidence… Indeed, the evidence must be sufficient to require a
`finding of deceitful intent in the light of all the circumstances.
`Hence, when there are multiple reasonable inferences that may
`be drawn, intent to deceive cannot be found.
`
`
`Therasense, p. 25.(emphasis added).
`
`Continuation and Continuation-in-Part Applications
`
`B.
`
`28.
`
`Defendant, in its allegations, and Mr. Godici, in his Expert Report, discuss the
`
`difference between various types of U. S. patent applications, including continuations (CON)
`
`and Continuations-in-Part (CIP).
`
`29.
`
`These labels which are primarily for administrative convenience. identify from
`
`where the application originated, and whether there have been particular changes made in such
`
`applications.
`
`30.
`
`In patent prosecution practice, it is important to maintain the “priority date” to
`
`which the application is entitled, since other issues, such as who is entitled to the issued patent
`
`and what prior art may be applied against the application, are directly affected by the priority
`
`date. The patent law permits applicants to claim the priority date pursuant to 35 USC §120. In
`
`general, the priority date is the earliest date to which the applicant is entitled so long as a
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`continuity of applications is maintained.
`
`31.
`
`A “continuation application” (CON) is an application for an invention which is
`
`disclosed in a prior, co-pending application, (the so-called “parent application”), and which has
`
`at least one inventor in common, but which may not include what is referred to as “new
`
`matter”.
`
`32.
`
`A “continuation-in-part application” (CIP) is a similar type of application to the
`
`continuation application, except that it permits the applicant to include “new matter” which was
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`not disclosed in the parent application, and are typically filed to permit the inclusion of
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`improvements or refinements to the original application.
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`33.
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`In practice, the applicant is entitled to priority in a CON or a CIP for claims
`
`supported by the parent application. Claims that require support by new matter in a CIP are
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`only entitled to priority as of the filing date of the CIP.
`
`34.
`
`It is routine, and not in the least unusual, to have strings of CON and/or CIP
`
`applications depending one from the other, creating “grandparent” , “great grandparent” , etc.
`
`applications.
`
`35.
`
` With regard to priority benefits, the Manual of Patent Examining Procedure
`
`(MPEP) instructs Patent Examiners to be vigilant toward, for example clerical errors, especially
`
`those which might have substantive effect: “[T]he identifying data of all prior applications
`
`for which benefits are claimed should be reviewed by the examiner to ensure that the data
`
`is accurate . . . .” MPEP, 202(I). (emphasis added).
`
`36.
`
`The PTO also has a rule regarding the duty of candor to the PTO. 30 CFR §1.56
`
`or “Rule 56” requires the applicant to disclose to the PTO all information material to
`
`patentability.
`
`37.
`
`However, as noted in Therasense, the Federal Courts are not to apply the Rule
`
`56 standard used by the PTO, but rather they are to use the “but for” standard articulated in
`
`Therasense
`
`This court does not adopt the definition of materiality in PTO Rule
`56. As an initial matter, this court is not bound by the definition of
`materiality in PTO rules. See Merck & Co., Inc. v. Kessler, 80 F.3d
`1543, 1549-50 (Fed. Cir. 1996) (“[T]he broadest of the PTO’s
`rulemaking powers . . . does NOT grant the Commissioner the
`authority to issue substantive rules.”); see also 57 Fed. Reg. 2021
`(Jan. 17, 1992) (The PTO stated that Rule 56 “do[es] not define
`fraud or inequitable conduct.”). While this court respects the
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`PTO’s knowledge in its area of expertise, the routine invocation of
`inequitable conduct in patent litigation has had adverse
`ramifications beyond its effect on the PTO. As discussed above,
`patent prosecutors, inventors, courts, and the public at large have
`an interest in reining in inequitable conduct. Notably, both the
`American Bar Association and the American Intellectual Property
`Law Association, which represent a wide spectrum of interests,
`support requiring but-for materiality (which is absent from Rule
`56).
`
`Therasense, pages 31-32.
`
`C.
`
`38.
`
`Non-Publication Request Certification
`
`After 18 months after the priority date, the PTO will ordinarily publish the
`
`patent application, thereby making it public. However, applicants may request that their
`
`application not be published if they agree to certain conditions, specifically, that they aver that
`
`they have not, and intend to not file the application in another country.
`
`39. MPEP 1122(III) provides:
`
`Where a foreign or PCT application is filed first, and a U.S.
`application is filed thereafter with an (improper) nonpublication
`request, the Office will not consider the U.S. application as
`abandoned for having made the nonpublication request. This is
`because the statute only provides for an application to be regarded
`as abandoned when the applicant fails to notify the Office within
`45 days of a subsequently filed application that is directed to the
`same subject as the invention of the U.S. application in another
`country, or under a multilateral international agreement, that
`requires eighteen-month publication of applications.
`
`Understanding of “Delay” in PTO
`
`As a rule of thumb, the USPTO does not consider an applicant’s or practitioner’s
`
`D.
`
`40.
`
`response or other communication that is submitted within three months of a triggering event or
`
`communication to be “delayed”. For example, MPEP” provides:
`
`The Office does not generally question whether there has been an
`intentional or otherwise impermissible delay in filing an initial
`petition pursuant to 37 CFR 1.137, when such petition is filed:
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`(A) within 3 months of the date the applicant is first notified that
`the application is abandoned; and
`(B) (B) within 1 year of the date of abandonment of the
`application.
`
`Thus, an applicant seeking revival of an abandoned application
`is advised to file a petition pursuant to 37 CFR 1.137 within 3
`months of the first notification that the application is
`abandoned to avoid the question of intentional delay being
`raised by the Office (or by third parties seeking to challenge
`any patent issuing from the application).
`
`
`Where a petition pursuant to 37 CFR 1.137 is not filed within 3
`months of the date the applicant is first notified that the application
`is abandoned, the Office may consider there to be a question as to
`whether the delay was unintentional. In such instances the Office
`may require further information as to the cause of the delay
`between the date the applicant was first notified that the
`application was abandoned and the date a 37 CFR 1.137 petition
`was filed, and how such delay was “unintentional.”
`
`To avoid delay in the consideration of the merits of a petition
`under 37 CFR 1.137 in instances in which such petition was not
`filed within 3 months of the date the applicant was first notified
`that the application was abandoned, applicants should include a
`showing as to how the delay between the date the applicant was
`first notified by the Office that the application was abandoned and
`the filing of a petition under 37 CFR 1.137 was “unintentional.”
`
`MPEP 711.03(c)(II)(D).
`
`E.
`
`Duty to Investigate
`
`41.
`
`In various places in his Report, Mr. Godici makes much of a purported obligation
`
`under the Signature Requirement provision of the Federal Rules, 37 CFR §11.18, and his view
`
`that a failure to comply with that requirement gives rise to a breach of the duty of candor under
`
`Rule 56.
`
`42. While I would not dispute the literal language of the Signature Requirement, Mr.
`
`Godici’s implications regarding its reach and effect as to determinations of inequitable conduct,
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`if taken literally, would give rise to situations of inequitable conduct simply not contemplated by
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`that provision.
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`43.
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`Specifically, Mr. Godici suggests that every time an attorney, agent, or pro se
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`applicant signs a document they not only attest to the truth of the statement, a violation of which
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`is potentially subject to the criminal provisions of 18 USC 1001, but that an “inquiry” must be
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`made, albeit “reasonable under the circumstances”, as to four different circumstances: 1) that the
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`underlying paper is not being presented for an improper purpose; 2) that any legal contentions
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`are warranted under law; 3) that allegations made have evidentiary support or will likely get it;
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`and 4) that denials of factual contentions are also warranted on the evidence.
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`44.
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`He further contends throughout his Report that, in his view, various of the parties
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`and their attorneys and agents did not make literally make such an inquiry, for example by the
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`applicants of all of their counsel, in several circumstances and, therefore, this gives rise to an
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`inference of Rule 56 breach of duty of candor, and by extension, inequitable conduct.
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`45. While I respect Mr. Godici’s views on this point, it begs credulity for him to
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`genuinely suggest and believe that such a literal inquiry must be made before every signature of
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`every document an applicant or their attorney/agent submits to the Office.
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`46.
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`This is not to say that there is not a requirement, it is simply that Mr. Godici’s
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`reading of it is so strict and formalistic that the risk of non-compliance by members of the PTO
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`bar, and subsequent potential discipline by the Office, is much higher than the reasonable
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`practitioner would assume.
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`47.
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`Consider, for example, Mr. Godici’s seeming contention that the applicants had a
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`formal duty to inquire of all of the several counsel they used in the prosecution of these cases as
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`to any number of minor issues regarding the entirety of the wording (or the negative implication
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`of that wording).
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`48.
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`Does he genuinely mean that, for example, in an in-house setting when more than
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`a few practitioners might handle a particular case, that every time a document happens to require
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`a signature, the Rule would mandate that the proposed filer of the document must go back to
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`each counsel that touched the case and make an affirmative inquiry regarding the nature and
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`veracity of the matter to which the signature is applied?
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`49.
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`That simply is not a reasonable interpretation of the rule. It would bog down the
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`entire system of its own weight and expense just in trying to track down these previous attorneys
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`to get their acknowledgement of the cumulative evidentiary support for the contention supported
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`by the signature.
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`50.
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`To the contrary, the Signature rule, like all rules, is subject to reasonable
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`interpretation and the duty which Mr. Godici seeks to impose on the string of counsel in this
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`case is simply not reasonable under these circumstances.
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`F.
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`PTO pro se assistance program
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`51.
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`The PTO now has a pro se assistance program to assist unrepresented inventors.
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`The program was started in 2014 to assist pro se inventors in patenting their inventors. As part
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`of my responsibilities at the AIPLA, I was heavily involved in the planning and implementation
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`of the program. Among the reasons for its creation was a recognition that pro se applicants are
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`more inclined to make or introduce errors during the filing or prosecution of applications than
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`members of the PTO bar, and that professional assistance benefits both the applicant and the
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`system. Prior to 2014, no such program existed and many pro se inventors had difficulty
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`understanding the nuances of PTO rules, filing patent applications and associated paperwork,
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`and prosecuting applications.
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`G.
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`52.
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`Regularity of Mistakes in Patent Prosecution
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`The PTO rightfully recognizes that honest mistakes regularly occur during the
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`preparation, filing, and prosecution of patent applications, and provides applicants the to
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`opportunity to correct such mistakes through, among other means, submission of petitions for
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`certification of correction of issued patents to the PTO. Indeed, in each year between 2012-
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`2016, more than 25,000 such petitions were submitted. (2016 USPTO Performance and
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`Accountability Report at 201.) Furthermore, in 2016 alone, more than 4,000 petitions for a
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`“late claim for priority” were filed. Id. The filling of such corrective petitions is a relatively
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`common occurrence.
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`53. While patent attorneys may be regarding as among the most scrupulous in the
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`legal profession, in my experience, even the best of them, from time-to-time, make honest
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`mistakes and overlook details in the arcane and rule-bound area of patent prosecution.
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`V.
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`RECITATION OF RELEVANT FACTS
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`54.
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`The chart below illustrates the relationships between the relevant patents, patent
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`application and patent publications. Herein, I may refer to patents, applications, or patent
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`publications by an apostrophe followed by their last three digits, as is common practice.
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`55.
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`The same individual, Mr. Aldulhakim Nobahar, was the assistant patent
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`examiner for the ’837 patent, the ’676 patent, the ’432 patent, and the ’129 patent.
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`USAA_AK_0023136; USAA_AK_0004761; USAA_AK_0000236; USAA_AK_0004034.
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`Further, the same individual, Mr. Gilberto Barron, Jr. was the primary patent examiner for
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`the’432 patent, the ’129 patent, and the’837 patent. Id.
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`A.
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`Prosecution of the ’432 Patent
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`56.
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`The application that led to the ’432 Patent, U.S. Patent App. No. 12/210,926,
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`was originally filed by Mr. Bijan Tadayon on September 15, 2008. USAA_AK_0018299-335.
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`57.
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`At filing, priority was claimed as follows:
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`USAA_AK_0018332.
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`58.
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`As indicated above, Dr. Tadayon explicitly indicated that USP 7,356,837 (“the
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`’837 patent”), to which priority was claimed had already issued as a patent. Further, Dr.
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`Tadayon explicitly informed the PTO that “the current application [that lead to the ’432 patent]
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`has the same exact specification and Figures as those submitted with the original application
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`[that lead to the ’837 patent].” As to US Patent App. No. 11/239,046, which later issued as
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`USP 7,444,676 (“the ’676 patent”)—and does not share “the same exact specification and
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`Figures” with the application that lead to the ’432 patent—Dr. Tadayon did not make a similar
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`statement.
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`59.
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`Dr. Tadayon believes that patent priority may be properly cl