The Standard For Attorney Diligence Is High¹

By Charles L. Gholz² and Christopher Ricciuti³

INTRODUCTION

In re Enhanced Security Research, LLC, 739 F.3d 1347, 109 USPQ2d 1265 (Fed. Cir. 2014) (opinion by Circuit Judge Dyk joined by Circuit Judge Taranto, over a dissent on other grounds by Circuit Judge O’Malley) (hereinafter referred to as “ESR”), was an appeal from the BPAI⁴ in an ex parte reexamination.⁵ It involved attorney diligence in the context of 37 CFR 1.131 declarations rather than in an interference context. However, the majority relied on an interference precedent in reaching its conclusion, and it seems likely that subsequent panels will, in turn, apply this precedent in the interference context.

WHAT ESR HELD

The document that Enhanced Security Research, LLC (hereinafter referred to as “ESR”) sought to remove as a reference against the claims in its patent in reexamination (hereinafter referred to as “the ‘236 patent”) “contain[ed] an inscription that dates it to May 1996...,”