Timing of Post Filing Conduct Deemed Crucial
As discussed previously, one purpose for seeking patent reexamination parallel to litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent.
As Fairchild semiconductor learned the past week, it is probably best not to wait 5 years into a litigation and after a jury trial to showcase that objectively reasonable behavior. Read the rest of this entry »
Broadest Reasonable Interpretation (BRI) an Outer Limit?
In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).
Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).
In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.
However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.
Read the rest of this entry »
Litigation Based Rationale Falls Flat Before USPTO
As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.
In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.
In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way. Read the rest of this entry »
Parallel Patent Reexaminations Given Little Weight at ITC
As detailed in past posts, an ongoing patent reexamination may help defendants stave off an injunction in district court. For example, in Flexiteek v. Plasteak, (S.D. Fla. 2010) (Cohn, J.), the district court opted to stay the enforcement (order here) of the permanent injunction based upon the status of the related patent reexamination. At the ITC however, patent reexaminations are viewed as a routine occurrence.
As explored in the ITC action initiated by Tessera Inc., In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, 2008 WL 2223426 (Int’l Trade Comm’n May 27, 2008), it is next to impossible to stay an ITC proceeding pending an ongoing patent reexamination. This is due to the ITC’s statutory mandate to conclude investigations within a strict time frame.
Having lost the battle to stay the case, the remaining Tessera defendants cited the existence of the ongoing patent reexamination as a basis to avoid an exclusion order. The defendants asserted, that the public interest analysis required by 19 U.S.C. § 1337 (d)(1) was akin to the factors enumerated in eBay Inc. v. Mer-cExchange, L.L.C., 547 U.S. 388 (2006). In arguing for the Ebay factors, the defendants emphasized that money damages may be more appropriate for a “licensor” such as Tessera and that there would be no irreparable harm.
Yesterday, the CAFC contrasted the principles of equity applied in district courts to the statutorily mandated exclusion order of the ITC in Spansion v. ITC, and affirmed the ITC’s treatment of the ongoing patent reexaminations as largely irrelevant. 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 »
Texas Court Likens Issuance of Continuation Patents During Litigation to Patent Reexamination
As discussed yesterday, willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). In assessing the propriety of a post-filing willfulness allegation (i.e., after the complaint is filed with the court) Seagate is oft cited for the proposition that a plaintiff must seek injunctive relief (i.e., preliminary injunction). However, court’s have refused to impose such a wooden rule. Instead, court’s look to the totality of the circumstances, including factors such as the existence of concluded patent reexaminations.
In other words, where a patent survives patent reexamination, conduct of a defendant after issuance of the reexamination certificate may be deemed reckless. Ultratech Int’l, Inc. v. Aqua-Leisure Indus., Inc. v. Swimways Corp., No. 3:05-cv-134-J-25MCR, 2009 (M.D. Fla. Mar. 3, 2009); See also St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., 2009 U.S. Dist. LEXIS 49922, at *5-6 (D. Del. Jun. 10, 2009).
Last week, in denying a defendant summary judgment motion of no willful infringement, Judge Ward of the Eastern District of Texas extended the patent reexamination rationale noted above to newly issued continuation patents. In essence, Judge Ward explained that the prior art applied in the litigation for invalidity purposes had already been laundered by the USPTO during prosecution of the continuation patent applications. Read the rest of this entry »
Demonstrating Objectively Reasonable Conduct
The admissibility of evidence relating to an ongoing patent reexamination in a parallel patent litigation is often times a question of both purpose and timing. Last January, we presented a four part series on this topic. These earlier posts compared the attempted litigation purpose (i.e., willfulness, inequitable conduct, claim construction, etc) of patent reexamination evidence relative to the stage of the patent reexamination (i.e., grant, first action, final action, etc).
In addition to these two factors, consideration must also be given to the litigation forum.
As mentioned above, one purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent. Although some courts have found that reexamination evidence defeats a finding of willfulness, these courts typically examine the status of the claims in the reexamination proceeding at the time of the willfulness determination, finding that the weight of the reexamination evidence depends on whether the reexamination proceedings are complete and whether the patent claims have undergone substantive changes in reexamination. When seeking introduction of such evidence, depending upon the court, the stage of the parallel litigation (Summary Judgment, JMOL, Pre-Trial Motions) may determine whether or not it is admissible. Read the rest of this entry »
Inadvertent Disclosure of Reexamination Strategies Protected by Court
In Acer Inc., et al v. Technology Properties Limited LTD et al. (NDCA), the plaintiffs are seeking a declaratory judgment of non-infringement and invalidity of TPL patent 5,809,336. Previously, the ‘336 Patent was the subject of an ex parte patent reexamination.
During discovery, two emails between an inventor of the ‘336 Patent and reexamination counsel were inadvertently provided to the plaintiffs. The first email appeared to discuss the attorney’s impression of the interview, while the second email conveyed the inventor’s thoughts on issues considered in the reexamination. Not surprisingly, once produced, TPL informed the plaintiffs that the emails were privileged and should be returned. Of course, the plaintiffs disagreed, and left it for the judge to decide.
Read the rest of this entry »
Rationale for Lower Standard Gutted?
In 2009, Microsoft was found to have infringed i4i’s 5,787,449 patent (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). The ‘449 Patent allegedly claims certain XML translation features of Microsoft Word. An appeal to the CAFC earlier this year was unsuccessful.
Along the way to the CAFC, Microsoft sought ex parte reexamination of the ‘449 Patent (90/010,347), largely as an afterthought to hedge against a willfulness finding. Not surprisingly, since the request ignored definitions of certain claim terms of the ‘449 Patent specification, the reexamination attempt was unsuccessful (no claim changes) and all claims exited reexamination in July of this year
On August 27th, Microsoft filed a petition for certiorari questioning the lower court’s use of the clear and convincing standard relative to art not before the USPTO during prosecution of the original patent application. At roughly the same time, Microsoft filed a second request for ex parte reexamination of the ‘449 patent (90/011,198). Today the USPTO denied the second request outright, giving Microsoft and their shareholders a bit less to be thankful for this holiday season. (a copy of the denial is not yet available).
With many predicting a decision on the pending SCOTUS cert request to be imminent (i.e., this coming Monday), it seems as though Microsoft may have just had their legs cut out from under them. 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 »
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