Patents Post Grant Blog

Success in Halting Infringement Case Varies Across Courts/Judges

Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a Patent Office reexamination. For this reason, patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding.

Perceptions as to whether or not a stay is warranted will vary significantly, even though the same analysis is performed by each court. (See factor based analysis here). Attitudes vary across courts (ITC v. EDTX, v NDCA), even amongst judges of the same court.

Thus, a threshold determination for any defendant becomes:

How does Court/Judge X view requests for patent reexamination?…and is there somewhere I can find this information? Read the rest of this entry »

Interval Licensing Litigation Stayed Pending Patent Reexamination

Former Microsoft founder Paul Allen has made headlines recently by asserting the patents of his company, Interval Licensing against the 11 industry stalwarts (Apple, Google, Facebook, NetFlix, AOL and others). The case was initially stalled when the court found the opening complaint lacking in detail, but this formality was quickly corrected. Last week, however, a much more significant roadblock was placed in the path of Mr. Allen’s litigation endeavor—-patent reexamination. A judge in the Western District of Washington has halted the proceedings against all 11 defendants pending patent reexamination.

As most readers of this blog realize, obtaining a stay of an ongoing district court infringement action is one of the many benefits of patent reexamination parallel with litigation. Defendants that are able to obtain a stay pending patent reexamination can avoid cost prohibitive litigation discovery during the course of the USPTO proceeding, which can be rather lengthy. 

In addition to cost savings, there are also tactical advantages to the USPTO proceeding. Unlike the courts, in patent reexamination, the USPTO does not recognize the presumption of validity. Moreover, the USPTO does not require the “clear and convincing” standard to demonstrate invalidity in patent reexamination, but employs the more liberal ”preponderance of the evidence” standard. As such, defendants can enhance the strength of their invalidity defense via patent reexamination. So, in essence, Interval Licensing is now facing a new challenge that must be overcome before the litigation resumes, and at much longer odds.

In considering if Interval Licensing’s interests would be prejudiced by a delay in the litigation of a length necessary to reexamine the patents at issue, the court  emphasized the fact that Interval licensing is a holding company (known as a patent troll to some).

The full decision Read the rest of this entry »

Recently Filed Reexaminations Sway California Court to Halt Proceeding

TiVo’s patent battles have been making headlines for quite some time now. Last week, the battle with EchoStar finally concluded with a $500 million dollar payout. During this dispute, TiVo’s “Time Warp” patent (6,233,389) escaped two separate challenges in patent reexamination relatively unscathed.

TiVo continues to battle AT&T and Microsoft over the same digital video recorder technology. In 2009 TiVo sued AT&T in Eastern District of Texas for infringement of several patents, including its Time Warp patent. As a result of that lawsuit, Microsoft has stepped in to the fray in Texas in an attempt to aid their customer AT&T. 

Perhaps more interestingly, in addition to joining forces with AT&T in Texas, Microsoft has sought to pound TiVo into submission in Texas by initiating multiple retaliatory suits of their own. Since January of 2010, Microsoft has pursued TiVo at the International Trade Commission (ITC), and Western District of Washington on 4 of their patents. In a separate suit filed the Norther District of California another 7 Microsoft patents are asserted against TiVo.  

The Washington case is now stayed pending the ITC action, which is set for trial this November.

Last week, the California court stayed further proceedings pending the ex parte patent reexamination of the seven Microsoft patents. The decision to stay this case highlights the difficulty of being a plaintiff the size of Microsoft. Read the rest of this entry »

Stay of California Litigation Extended to Await USPTO Clarification

Typically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to move forward with the litigation. For example, where claims are confirmed/allowed, a judge is likely to consider lifting the stay.

Recently, in Cellectricon AB and Gyros AB v. Fluxion Biosciences Inc. (NDCA) a status report was provided to the juge noting the progress of four patent reexamination proceedings corresponding to the patents-in-suit. (7,470,518; 7,390,650; 7,563,614; and 5,376,252) The ‘252 was subject to ex parte patent reexamination and recently concluded with its claims being confirmed, the other three patents were subjected to inter partes patent reexaminations that are still in progress. In one of these three cases claims were also confirmed by the examiner, but subject to appeal to the BPAI. Based on the positive developments, the plaintiff patentee sought to lift the stay. However, in determining whether or not to lift the stay, the judge was troubled  by the seemingly inconsistent inter partes patent reexamination results. Read the rest of this entry »

Speed of Patent Reexamination Not So Special?

As most readers of this blog realize, patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy. Of course the ultimate determination of whether or not a stay is appropriate varies with the facts of each case, and attitudes toward such practices vary wildly across jurisdictions, and even across judges of the same court. 

Last week’s determination in Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED, Norfolk) was typical in many respects. With discovery coming to a close, Markman proceedings complete, and trial scheduled in three months time, it seemed the timing alone was enough to deny the motion to stay. While the stay was denied, the court took the opportunity to call out the special dispatch accorded patent reexaminations at the USPTO as….well, not so special. Read the rest of this entry »

Your Honor…the dog ate our first reexam request

In reviewing the cases each week that analyze staying an ongoing district court patent infringement proceeding pending a concurrent patent reexamination, I am always struck by the length of time defendants will wait before seeking reexamination. In many cases, years are allowed to pass, Markman Hearings come and go, significant discovery is conducted, etc. Equally surprising is the willingness of certain courts to look the other way on such late filing practices.

Not surprisingly, once such a late a request is filed, and the corresponding motion to stay is filed with the court, plaintiffs will point out the late timing of the reexam demonstrates how the defendant is seeking to gain a tactical advantage, and how the new proceeding delay ultimate resolution and unfairly prejudice the plaintiff. To be sure, this practice appears to be waning as defendants begin to recognize the significant benefits of an ongoing patent reexamination, aside from the potential of securing a stay. Yet, for those defendants that continue to adhere to the myopic view of patent reexamination as an unlikely escape hatch only, new and improved rationales justifying delay are required.

Recently, in CCP Systems AG, v. Samsung Electronics Corp., LTD et al. (DNJ) the defendant explained away a 1 year delay with relative ease. Read the rest of this entry »

CAFC Mandamus Decision Forces Acer Dispute to California

Last Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.

The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum. Read the rest of this entry »

Late Amendment Tips Scales in Favor of Defendants

Last Wednesday, Judge Davis (EDTX) was asked to revisit a motion to stay an ongoing litigation between SouthWire Company v. Cerro Wire, et al. pending concurrent patent reexamination. Previously, the judge had denied a request to stay the case without prejudice (U.S. Patent 7,557,301). In the previous decision, Judge Davis reasoned that as the dispute is between direct competitors, such a stay could prejudice the plaintiff.

After the earlier denial, patent reexamination proceedings continued on not only for the ‘301 Patent, but also its parent, U.S. Patent 7,411, 129. The ‘129 is subject to inter partes reexamination (requested by defendant Cerro).

Recently, an attempt to amend the ‘129 Patent was denied as untimely since it was not introduced prior to the Action Closing Prosecution (ACP).  However, the ‘301 Patent was not as far advanced, and, after a first action, an amendment was submitted. (June 2010). In deciding the renewed request to stay the case, the court found that the amendment tipped the scales in favor of a stay. Read the rest of this entry »

Participation in USPTO pilot program held against Patentee

In August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).

Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination.

In my earlier posts on the pilot program I questioned the affect participation in this program would have on a district court’s decision to stay a parallel litigation. The impact of a Patentee’s participation in the pilot program was recently considered in Brass Smith LLC v. RPI Industries Inc. (D.NJ).

Perhaps realizing that NJ is rather “stay friendly,” the plaintiff decided to cooperate with the USPTO and waive their right to a patent owner response period. Brass informed the court of the participation in the program, stating that the reexam would now move faster. Brass also proposed that RPI agree to stop selling/marketing the infringing products until the reexam was completed in exchange for the stay. (see my post of last month on the self imposed injunction tactic). The thinking of Brass seemed to be that, since  the NJ court was likley to grant the stay anyway, Brass may as well try to angle for some sort of benefit.  Ignoring, the attempt at striking a bargain, the court just stayed the case, in part, citing the accelerated reexamination schedule as justification. Read the rest of this entry »

Creative Motions Undermine Delay Prejudice

Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).

Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)

Read the rest of this entry »