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ROY-G-BIV Corporation

投稿日: Dec. 7, 2009   投稿者: Aldo Martinez and Scott A. McKeown
トピックス: 査定系再審査, 当事者系再審査, 訴訟の一時停止または棄却
On April 14, 2009, USDJ David Folsom issued an order denying Defendant’s, Fanuc Ltd., et al, motion to stay litigation pending the outcome inter partes and ex partes reexamination of patents-in-suit: 3 inter partes, 1 ex parte. ROY-G-BIV Corp. v. FANUC Ltd. et al., No. 2:07-CV-418 (E.D. Tex., April 14, 2009)
Judge Folsom decided whether defendants, having waited a full year after the suit was filed to request reexamination coupled with the additional delay of lengthy reexamination proceedings, would be unduly prejudicial to Plaintiff. Relying on Institute for Progress analysis of the inter partes reexamination process, the judge projected that the stay could last twenty-eight months at a minimum. The trial date, less than six months away, had been set. These two factors coupled with the likelihood that a stay would force the parties to redo a significant amount of their claim construction briefing, “weigh heavily against granting the stay,” under Judge Folsom’s analysis.
That the reexamination may simply the issues “is difficult to gauge,” according to Judge Folsom the early stage of the reexamination process and the uncertainty of cancellation or modification of claims through amendment. “Furthermore,” writes the Judge, “it is this Court’s experience that the reexamination process may actually complicate a case by creating additional prosecution history estoppel and disavowal arguments that must be addressed during claim construction.”
Finally Judge Folsom noted that although discovery was not complete, claim construction briefing is complete, and trial is six months away.
Accordingly, Judge Folsom denied Defendant’s motion.

On April 14, 2009, U.S. District Court Judge David Folsom issued an order denying a Fanuc Ltd., et al motion to stay litigation pending the outcome of three inter partes and  one ex partes reexamination regarding US Patents. ROY-G-BIV Corp. v. FANUC Ltd. et al., No. 2:07-CV-418 (E.D. Tex., April 14, 2009).

Judge Folsom decided whether defendants’ actions, having waited a full year after the suit was filed to request reexamination, in light of the additional delay of lengthy reexamination proceedings, would be unduly prejudicial to Plaintiff. Relying on analysis from the Institute for Progress regarding the inter partes reexamination process, Judge Folsom projected that the stay could last twenty-eight months at a minimum. Judge Folsom found this lengthy projection unfavorable especially because the trial date had been set for less than six months away.  Judge Folsom also cited the likelihood that a stay would force the parties to redo a significant amount of their claim construction briefing to “weigh heavily against granting the stay.”

Judge Folsom was not convinced the reexamination would simplify the issues in the dispute citing the early stage of the reexamination process and the uncertainty of cancellation or modification of claims through amendment. “Furthermore,” wrote the Judge, “it is this Court’s experience that the reexamination process may actually complicate a case by creating additional prosecution history estoppel and disavowal arguments that must be addressed during claim construction.”

Judge Folsom concluded that although discovery was not complete, claim construction briefing was complete, and trial is six months away.  Accordingly, Judge Folsom denied Defendant’s motion.

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Final Decision: Ex parte Patrick D. McCarthy

投稿日: Dec. 7, 2009   投稿者: Aldo Martinez and Scott A. McKeown
トピックス: 同時進行手続き, 査定系再審査

On September 18, 2009, the Board of Patent Appeals and Interferences affirmed-in-part Examiner’s rejection of several asserted claims in U.S. Pat. Re. 36,116 under 103(a) obviousness and 102(b) anticipation. The Board, however, did reverse Examiner’s 102(b) rejection of claims 1-5 and 35.  The patent is subject to concurrent litigation in the Eastern District of Texas. Source, Inc. v. American Express Company, No. 2-05-CV-364 (E.D. Tx. filed Aug. 10, 2005)

Reexamination Control 90/007,258

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Ex Parte BRP US Inc.

投稿日: Dec. 7, 2009   投稿者: Aldo Martinez and Scott A. McKeown
トピックス: 同時進行手続き, 査定系再審査

On September 15, 2009, the Board of Patent Appeals and Interferences reversed Examiner’s 103(a) rejection of claims asserted in U.S. Pat. No.  6,336,833.  The claims relate to “a watercraft … having a throttle actuator which responds to manual steering control for causing a steerable propulsion unit to generate a propulsive force upon turning the steering control beyond a predetermined angular threshold.” The patent is subject to concurrent litigation which has been stayed pending the outcome of the reexamination. Bombardier Recreational Products, Inc., et al. v. Kawasaki Heavy Industries, Ltd., Case No. 6:06-cv-00195-JA-JGG (M.D. Fla. 2006).

Please see “Attacking a Patent in Reexamination for Lack of Written Description and Enablement?” by Stephen G. Kunin for a discussion of intervening art and the written description requirement.

Reexamination Control 90/008,222

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