Patent No. 7,018,407: Filed in 1981, Expires in 2026?

In March 2006, Medtronic was awarded Patent No. 7,018,407 -- a patent related to a tricuspid heart valve holder. This case is interesting because the patent stems from an application originally filed 24 years earlier in 1981.

In 1988, the applicant appears to have lost an interference proceeding regarding some of the claims.  The next correspondence comes 16 years later with an Ex Parte Quayle action that would lead to the 2006 allowance.

According to Alan Harrison, an Intellectual Property Analyst at Nerac, the PTO has also granted a further extension of 1109 days "for the delays in adjudication of the interference." 

Enforcement of pre-1995 patents has an additional twist regarding pre-existing use. Again, Alan Harrison:

35 USC 154(c)(2) REMEDIES moderates enforceability by prohibiting injunction, damages, or award of attorney fees against uses "commenced or for which substantial investment was made" during the pendency of the application prior to June 8, 1995 (pre-existing use).

But Medtronic still may sue competitors who continue their pre-existing use, and to continue such use those competitors must make equitable REMUNERATION under 35 USC 154(c)(3). Following Bristol-Myers Squibb Co. v. Royce, 69 F.3d 1130 (Fed.Cir. 1995), Medtronic may alternatively require deferment of FDA approval for infringing devices during the enforceable life of the patent.

It is unclear whether this patent has any commercial value -- and whether its submarine style emergence create other prosecution laches problems.

Comments

[Noah Sachs]

That is too funny. I'm surprised after 16 years that anyone at Medtronic even remembered they had filed that patent. Maybe this was that patent examiner who spent years hiding applications he didn't want to deal with in the ceiling tiles above his desk, until one day the weight of all the apps broke through the ceiling, and the Medtronic patent landed on his desk and prosecution just picked up where it left off as if nothing happened?

[crs]

Gee, you mean it's true about that patent examiner? Must be, there's nothing else that could explain it. And here I thought he was just an urban legend...

[Michael L. Slonecker]

There are cases that have been under Secrecy Orders since at least as early as the 1950's. Imagine if one of them was to issue today. Filed: 1/1/1950. Expires: 1/1/2027

Almost sounds like a copyright term....

[anonymous]

Well, this is fascinating...

There are precisely eight (8) patents that have issued since 1/1/2006 that were filed prior to 1987. Of those, six were the subjects of secrecy orders that were recently rescinded (interestingly, only some of those six have term extension -- upwards of 7,000 days!)

But the other two include the Medtronic '407 patent, above, and patent no 7,025,784, for "Method and apparatus for a tracheal valve", assigned to Hansa Medical Products, Inc. Guess what -- that one also was the subject of an interference, and also was "lost" for over a decade. What do these two patents have in common? The same examiner, Ronald L. Frinks.

Hmm....

[Alan Harrison]

Founder of "Staar Surgical Company"?
http://yahoo.brand.edgar-online.com/PeopleFilingResults.aspx?PersonID=3431452

[anonymous]

For those interested, the eight "old" patents can be found here:

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch-adv.htm&r=0&p=1&f=S&l=50&Query=ISD%2F1%2F1%2F2006-%3E4%2F24%2F2007+and+apd%2F1%2F1%2F1950-%3E1%2F1%2F1987&d=PTXT

As you might suspect, the assignees of the six previously secret applications included Boeing, Raytheon and Lockheed-Martin.

[anonymous]

Actually, my favorite story is U.S. Patent No. 6,726,683, to Robert Shaw for an "Electrically heated surgical cutting instrument". Filed 10/6/1977, prosecuted, and appealed after rejection. The history shows the reply brief filed in 1981, The BPAI did not assign a number until 2003, and then promptly reversed the examiner. Patent issued in April 2004.

The best part, of course, is that it is a divisional of a continuation of an application filed in 1967. Tough to say that prosecution laches should apply, though, with a 22 year delay by the PTO...

[metoo]

ROFL - I too have heard the story about the examiner hiding files above his ceiling.

[steve]

I was an examiner from 88-93.

I heard the rumor of the examiner hiding files in his ceiling tiles.

There was the other rumor of files disappearing via gym bag, never to be seen again.

[anonymous]

This sound remarkably like the Canadian Patent Office. The only difference being the fact that after an application is filed, you never hear from it again.....

[Lionel Hutz]

First, if the PTO is responsible for a delay, the Applicant should hardly be held responsible.

Second, OMG, is that Ronald Frinks stuff true or complete bullshit? If it is, is this being investigated?

[asdf]

"First, if the PTO is responsible for a delay, the Applicant should hardly be held responsible."

At some point, the applicant shares the responsibility. In Symbol Tech, 277 F.3d 1361 (Fed. Cir. 2002), the Federal Circuit cited Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923) in its justification for the prosecution laches defense. The Federal Circuit explained:

"The Court first applied the doctrine in Woodbridge to render a patent unenforceable where there had been an unexplained nine-year delay. Pursuant to a statute in place at the time, the Patent Office agreed to delay the issuance of Woodbridge's patent for one year. At the end of that time, the Patent Office neglected to issue the patent. Rather than inform the Patent Office of its error, Woodbridge waited nine years before requesting that the patent be issued. At the time of issuance, he sought to amend his specification and claims to encompass related innovations that had occurred in the intervening nine years. Woodbridge justified these actions on the ground that his invention had only recently become 'pecuniarily' valuable. 263 U.S. at 51-53, 44 S.Ct. 45. The Court held that because of his delay, he had forfeited his rights to the patent."

Thus, after one year, Woodbridge knew immediately that the USPTO messed up. But Woodbridge nevertheless leveraged the USPTO's error and allowed the USPTO to continue its delay for several years.

Here, unlike in Woodbridge, the applicant could not be sure that the USPTO messed up after one year. But what about 7 or 8 years after the interference? At some point, the applicant must have known that the USPTO had messed up, but allowed the USPTO to continue its delay for years. If the applicant did not send any status request letters in the sixteen years after the interference, it would be reasonable to assert the prosecution laches defense.

[jphudy]

HAHA, I love it. Can't say that I could hide a case in my ceiling tiles today since they are all electronic. But, I suppose I could just not act on a case in my docket for a long time. Humm... lets try the one with 100 claims first.... ahhhhh

[George]

seeing all the infos, I cann't help wondering if there is a docketing system in the Office to track down a case of any status once filed with the Office.

If there is, then, there should never be the "Ronald" incidence, cos the docketing system will alert the responsible staff to hunt-down the delayed case should it be delayed.

[anonymous]

The Ronald Frinks stuff is absolutely true. If PAIR had static links, I'd point you there directly. For now, look at the 7,025,784 patent in PAIR and the 2-8-1984 "Miscellaneous Action". This is the last activity before the interference and is signed by Frinks.

Similarly, in 7,018,407, look at the 11-15-1984 Non-Final Rejection, again the last examiner activity before the interference. Signed by Frinks.

This may not have been anything intentional (or even negligent) by Frinks... but it's a heckuva coincidence, ain't it?

[Elfin Magic]

of similar interest, i came across what must be the most extended prosecution ever for a design patent: D530,438. it's for the maglite flashlight. over 17 years from filing to issuance, including several appeals. no big gaps or lost files..just a lot of arguing.