The greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.
What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.” Read the rest of this entry »
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One of the threshold questions in considering patent reexamination, whether a patent owner, or third party is:
How long will it take?
This question is also the subject of significant debate when litigants in a concurrent district court proceeding argue for/against staying the proceeding. Defendants will often point to the published PTO statistics which identify a 24-28 month pendency to conclusion (NIRC). Conversely, Patentee’s point out that these published number do not account for appeal processing. As can be seen from the chart above, reexaminations that are contested through to appeal, are taking roughly 5 years (ex parte or inter partes). Thus, it is quite disingenuous for defendants Read the rest of this entry »
When evaluating a request to stay litigation pending reexamination, district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set.
In an recent opinion, U.S. Magistrate Judge Janie S. Mayeron denied defendants’ motion to stay litigation pending ex parte reexamination because, among other reasons, the reexamination proceedings could not streamline the case. J. Blazek SKLO Podebrady s.r.o. v. Burton Int’l Enterprises, Case no. 08-cv-2354 (D. Minn. June 11, 2010). At first blush, Judge Mayeron’s rationale for denying the stay seemed illogical as it is certainly the case that, cancellation or amendment of the claims in the patents under reexamination could moot issues of validity, enforceability, infringement, and even damages.
Upon closer inspection, however, this case presents an unusual set of facts in that the Read the rest of this entry »
Earlier this month, a federal judge in Florida cited to the PTO’s Ex Parte Reexamination Filing Data in denying an accused infringer’s request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc., Case No. 10-20528 (S.D. Fla. June 7, 2010). Judge Cecilia M. Altonaga pointed out that statistics show that “the reexamination process takes on average 25.4 months to complete, and another 24 months on average for appeals.” Defendant Littlefuse had filed its request for ex parte reexamination prior to the commencement of the district court action. Although judicial economy favored a stay, Judge Altonaga found the uncertainty in the length of reexamination proceedings disconcerting: “the length of the stay, if issued in this case, appears to be indefinite, and as such, is immoderate and unlawful.”
As a review for new readers, some IPR basics.
Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent. Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents. Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added. There are two types of reexamination proceedings: ex parte and inter partes. An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action. The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse Read the rest of this entry »
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 Read the rest of this entry »
United States District Court for the Northern District of California, San Francisco Division Judge Richard Seeborg issued an Order on April 26, 2010 denying a motion to stay Ultra Products, Inc. v. Antec, Inc. (Civil Action No. C 09-04255 RS) pending the outcome of a possible inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,133,293 (the “‘293 patent”). The ‘293 patent is directed to a modular computer power supply that is designed to reduce problems with personal computer cords. A decision on a refiled request for inter partes reexamination dated March 29, 2010 based on Neo-Power 480 materials has not yet been made by the USPTO.
In his decision to deny the stay of the patent infringement litigation, Judge Seeborg weighed three factors. The first two factors involve whether a stay would unduly prejudice or present a clear tactical advantage to the nonmoving party and will simplify the issues in question and trial of the case. The third factor is whether discovery is complete and a trial date has been set. He concluded that taken together these factors weigh against a stay of the patent litigation.
The judge exercised his discretion to deny the motion for stay on the basis that the stay would threaten Read the rest of this entry »
EDVA District Court Judge Payne denied the accused infringers’ motion to stay a patent infringement suit pending the outcome of reexamination of the patents-in-suit in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-cv-620 (E.D.Va. March 31, 2010). ePlus filed a patent infringement suit in May, 2009, against Lawson Software, Inc., and others alleging infringement of its patents covering electronic sourcing systems, which allow potential buyers to identify items for purchase in a plurality of electronic catalogs and create a requisition order for purchase of the selected items.
SAP America, Inc. and SAP AG had filed for an ex parte reexamination of one of the patents-in-suit. The USPTO ordered reexamination of the patent. ePlus’ appeal to the BPAI in the ex parte reexamination proceeding has not yet been decided. Later Lawson filed an inter partes reexamination request against other patents-in-suit.
Judge Payne considered the standard set forth Read the rest of this entry »
On March 23, 2010, Judge Timothy C. Batten Sr. of the U.S. District Court for the Northern District of Georgia refused to revisit his decision of February 22, 2010 to deny a stay of Optimum Processing Solutions, L.L.C. v. Advanced Micro Devices, Inc. et al. (Case No. 09-cv-01098) pending the outcome of reexamination of the patent-in-suit (U.S. Patent No. 5,115,497). The patent-in-suit entitled “OPTICALLY INTRACONNECTED COMPUTER EMPLOYING DYNAMICALLY RECONFIGURABLE HOLOGRAPHIC OPTICAL ELEMENT” issued May 19, 1992 and expired May 19, 2009. The stay was denied despite the fact that no depositions had been taken in the patent litigation and no claim construction order had issued.
On February 19, 2010, the USPTO ordered ex parte reexamination of claims 1-4, 11-12, 16-19 and 34-35 of the ‘497 patent based on a request filed by AMD. (Reexamination Control No. 90/010,783).
Since the ‘497 patent expired, no claim amendments can be made during the reexamination proceedings and claims will not be given their broadest reasonable interpretation (see our earlier discussion on the issue here). Rather much like what Judge Batten will do in his claim construction order, the USPTO will interpret the patent claims not only based on the words of the claims read in light of and consistent with supporting specification of the ‘497 patent, but also consider its prosecution history and any extrinisic evidence submitted in the form of expert declarations or affidavits as to the meanings of words in the claims, as to how they would have been understood by a person of ordinary skill in the technology of the patent at the time the invention was made.
Another week, another patent litigation stayed in a California court pending a concurrent USPTO reexamination. This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind. Com. De Equip. Medico (“GMReis”) over Synthes’ U.S. Patent No. 7,128,744 (“the ’744 patent”) covering locking bone plates used in surgery to secure fractured bones. In his Order Judge Lorenz stated that “[t]o proceed with the case during [inter partes] re-examination [of the ’744 patent] would needlessly duplicate the effort of the USPTO and forgo the benefit of its expertise and analysis.” He noted that “if the USPTO cancels the patent’s claims the issue of infringement will be moot.” On the other hand, if “the USPTO reaffirms the patent, the court will have the benefit of the agency’s analysis of the same prior art that GMReis is relying on to challenge the patent’s validity.” Because the dates for discovery, the Markman claim construction hearing and trial had yet to be set, the judge indicated that these factors weighed in favor of granting a stay of the litigation pending the outcome of the inter partes reexamination proceedings. The judge was unimpressed by the undue prejudice argument raised by the patent owner, since in the three years that the litigation was pending, “Synthes had not requested a preliminary injunction.”
The Order illustrates the value of an early filed reexamination. In this case, Smith & Nephew employed a common third party tactic of quickly filing an ex parte reexamination request at the outset of a dispute to get the reexamination going, followed up by a later filed inter partes reexamination request. This one-two-punch of ex parte and inter partes requests allow the requestor to initiate reexamination quickly, without having to worry about the comprehensiveness of the ex parte request, prior art search, etc. As the later filed inter partes request is subject to the “could have been raised” aspect of the 35 U.S.C. 315(c) estoppel provision, the later requests is prepared more carefully.
Smith & Nephew filed their ex parte reexamination proceeding (Control No. 90/009,377) on January 8, 2009. On May 5, 2009 the inter partes request was filed (Control No. 95/000,465). On July 14, 2009, the USPTO merged the proceedings. On November 5, 2009, the USPTO issued a non-final Office Action rejecting all of the ’744 patent claims for obviousness over a number of printed publications.
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