Giving Up What You Never Had
On September 20, 2010, Judge Ward of the Eastern District of Texas stayed the case of Microlinc LLC., v. Intel Corp et al. 2:07-CV-488. The patent at issue, 6,009,488 was asserted in 2005, but the action was voluntarily dismissed at the request of Microlinc to allow a first reexamination to conclude. Once this reexamination was terminated Microlinc reasserted the ‘488 Patent in 2007 against the same defendants. About the same time, Intel sought a second reexamination of the ‘488 Patent. A final rejection was issued in the second reexamination on May 26, 2010. On July 26, 2010, Microlinc filed a response adding 25 new claims.
Judge Ward stayed the case (decision here). While the case is now stayed, in his decision, Judge Ward offered the plaintiff an option to lift the stay that will necessitate the Patent holder give up, well….nothing.
In staying the case, Judge Ward seemed quite annoyed that Microlinc had pulled the plug on the case previously, and was now adding claims in the pending reexamination. Yet, in the decision, the judge provided an escape hatch to Microlinc, explaining:
[A]t the present time Microlinc seeks to further drag out the reexamination proceeding by filing twenty-five new claims. Thus, it is Microlinc that is delaying enforcement in this case. Finally, Microlinc expresses concern that since Intel has made multiple reexamination filings that it could continue to keep the ‘488 patent in reexamination proceedings and the action could take years to complete—thus prejudicing Microlinc. But Microlinc need not be so concerned. This Court chiefly finds that a stay is warranted in this case because Microlinc itself has amended many claims and asserted twenty-five new claims in reexamination. When the PTO takes action on these new claims this Court will consider lifting the stay. Or, alternatively, since Microlinc‟s amendments are minor, if Microlinc were to stipulate that it would not assert any of the twenty-five new claims against Defendants, then the Court would allow the case to proceed.(emphasis added)
Generally speaking, I believe stipulated stays are very helpful in managing the conditions of a stay pending patent reexamination. However, here the stipulation is largely meaningless. In other words, Patent Holder is given the option of a continued stay, OR, continuing to trial by relinquishing the right to assert claims that are unlikely to ever exist.
The 25 new claims were added after final rejection. Amendments after final in patent reexamination, like application prosecution, are governed by 37 CFR § 1.116. It is a near certainty that 25 new claims will be denied entry at this stage of the proceeding (the USPTO has yet to respond to the latest filing).
Unlike application prosecution there is no RCE option to pursue for entry of such claims after final rejection. This is why almost every first action includes the boilerplate:
If I am Microlinc I am rushing back to court to stipulate to non-assertion of these “new claims” before the USPTO makes it clear that my bargaining chips are illusory.