Patents Post Grant Blog

In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.  Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.  This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.

On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that Read the rest of this entry »

Many district courts have complained that the length of inter partes reexamination proceedings is a significant deterrent to granting a stay of patent litigation. Consequently, district courts typically deny a stay request where there is a newly filed inter partes reexamination request that could result in an indefinite delay in court action prejudicial to a Patent Owner. The Northern District of California however, appears to have deviated from this approach.

In Advanced Analogic Technologies, Inc. (“AATI”) v. Kinetic Technolgies, Inc. (“KTI”) (Case No. 09-CV-01360), Judge Maxine Chesney of the U.S. District Court for the Northern District of California granted an indefinite stay of a patent infringement suit pending the outcome of inter partes reexamination of AATI’s semiconductor patent-in-suit. The patent-in-suit is U.S. Patent No. 7,127,631 entitled “Single Wire Serial Interface Utilizing Count of Encoded Clock Pulses with Reset.” Both AATI and KTI make semiconductors used in computers, cameras and smart phones that employ integrated circuits with light-emitting driver circuits.

Interestingly, the stay was granted despite the fact that the USPTO has not even reviewed KTI’s inter partes reexamination request . A trial date had been set for March 2011 and significant discovery had been completed.

In the order staying the litigation Judge Chesney indicated that the stay would allow narrowing and clarifying claim construction via the reexamination proceedings. However, both parties agreed, that when accounting for appeals at the USPTO, the inter partes reexamination proceedings could take seven to eight years to conclude.

The parties are required to file annual joint status reports on the progress of the inter partes reexamination proceedings.