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Microsoft Just can’t Catch a Break in Patent Reexamination
Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations
As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to systems and methods for managing dynamic websites.
Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.
The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”). Both cases are now on appeal to the BPAI. The case is rather unremarkable in that Texas court denied the stay request pending reexamination (what else is new). Judge Folsom’s rationale for denying the stay was somewhat interesting however, noting:
…unless all claims of the patents-in-suit are invalidated through reexamination, the reexamination process may actually complicate the above-captioned case by creating additional prosecution history estoppel and disavowal arguments that must likely be addressed, such as during claim construction.
I’m not sure the potential addition of non-infringement positions and favorable claim construction positions cuts in favor of denying the stay AT ALL. Perhaps the judge, was just going off on a tangent. In his defense, none of the asserted claims have been amended, so, he probably should have just stuck with that rationale.
Sounds like an inadvertent set up for a possible mandamus? How can there be “additional prosecution history estoppel and disavowal arguments” if the reexamination is already at the Board with a completed examination record below? If any, it will have already occured, and could not be properly ignored.
Furthermore, that would be a logical reason to be more likely for a judge to find non-infringement and/or invalidity by summary judgment, rather than making the trial more complication as well as more unfair for the defendants. I can understand denying stays for PTO failure to comply with their statutory [expressly including the Board] “special dispatch” requirement, but this rationale seems bizzare.
Paul,
Most of the prosecution history seems to be a giant mess of 112 issues relating to new claims (five 1.181 petitions are pending to have amendments entered to address these issues…yikes). The asserted claims were not amended and the same arguments appear to have been made in the reexamination as to validity. I’m not sure why the judge would say something so unnecessary and off base.
Any chance any of the 112 rejections of new claims would also have been applicable to original claims (if that was not prohibited within reexaminations) but could help strengthen such arguments in litigation? I.e., I would be interested in your comments on whether you think that presents any danger in presenting new claims in a reissue?
If you re-present language of the original claims, as new claims, the PTO cannot reject that language on 112 grounds in reexamination. I have not reviewed the case in detail on this point, but my guess is that the new claims are trying to address claim construction issues.
Theoretically, 112 issues of new claims that are very closely related to original claim features could create some fodder for the litigation, but, I wouldn’t expect that to get very far.