While these patents seemingly expire August 6, 2012 (as a result of the priority claims and the terminal disclaimers that were filed in each patent), Google nonetheless continues its quest to invalidate the Lodsys Patent Claims. It is worth noting, that once a patent expires or is invalidated, it cannot then be infringed by anyone.

In summary, Google initiated Reexamination proceedings with respect to U.S. Patent No. 7,620,565 (Reexamination Control No. 95/000,638) and U.S. Patent No. 7,222,078 (Reexamination Control No. 95/000,639) seeking to invalidate the Lodsys Patent Claims. The patent office adopted a majority of Google’s proposed rejections. In response, Lodsys submitted Declarations seeking to overcome the patent office rejections (and particularly U.S. Pat. 5,965,505).

The Declarations submitted by Lodsys identified a number of reports authored by Daniel Abelow and Dr. Barbara Flagg. Interestingly, these reports were dated Spring 1991 — which is more than one year prior to the earliest filing dates of the Lodsys patents.

Google, seizing upon this, now proposes a number of additional rejections and enforcement issues based on these reports. For example, Google now proposes that the Lodsys Patent Claims are invalid under 35 USC 102(b), because:

1. one is not entitled to a patent if the invention was described in a printed publication more than one year prior to the date of the application for patent, and the reports predate Lodsys’s relevant patent application by more than a year;
2. one is not entitled to a patent if the invention was in public use, more than one year prior to the date of the application for patent, and the Declaration/reports indicate such a system was pilot tested and open to a number of students; and
3. one shall be entitled to a patent unless the invention was on sale in this country, more than one year prior to the date of the application for patent, and the Declaration/reports indicate Harvard accepted a proposal (arguably prior to Spring 1991) that was successfully completed.

If Google is correct on any of these points, the Lodsys Patent Claims appear to be unpatentable or invalid.

Google also notes that Lodsys never submitted the reports to the patent office despite its obligation to disclose information that may be material to patentability. A violation of this duty with respect to any claim could render all claims unpatentable or invalid.

In sum, the Lodsys Patent Claims seem to expire this summer and Lodsys’s efforts to keep the Lodsys Patent Claims from being invalidated have seemingly opened up a lodestone of new arguments that may be used to mitigate their impact. Stay tuned.

I think others will share your skepticism. Another option would be to require such a filing only after the Patent Owner requests verification (upon conclusion of an IPR or PGR). Filing such documents as a matter of course would seem unnecessary.

Also, I believe that the USPTO has deprioritized RCEs in favor of first office actions. Consequently, the added $4800 expense of RE RCE may also make sense for fast moving markets.

I agree that the injunction analysis will be very interesting. In the Standard Havens case a patent invalidated by reexamination is deemed void ab initio, if that reasoning is adopted, I don’t see how the injunction can stand.

As to IPR, the estoppel is one sided, as you point out. I am not sure why Congress chose to set up the system this way, perhaps to encourage judges to stay cases. If the IPR proceeding concludes within the designed time frame, it seems likely that the USPTO will beat all but the ITC to a conclusion. If I were a judge (as demonstrated by Newman’s position) I would not want someone undoing my work, different standards or not.

Things will become very interesting once IPRs start to be filed concurrent to litigation.

Scott

I think the interesting question will be what happens to the injunction on remand to the district court. I think Newman’s arguments will likely be more persuasive at that stage with respect to the injunction–i.e., the patent might be essentially dead to everyone except the petitioner here because an executive agency cannot constitutionally overrule an Article III court.

This also raises an interesting question with respect to your post at http://www.patentspostgrant.com/lang/en/2011/09/new-inter-partes-review. If I understand correctly, under the AIA, an IPR proceeding will not terminate even after a final judgment of validity with respect to the petitioner (contrary to the current 317(b)).

So what happens if if the IPR proceeding reaches the opposite result and invalidates the patent? It’s invalid as to all third-parties, but I’m not sure that it can change the result with respect to the damages / injunction from the district court case without running afoul of the constitution and separation of powers.

I think the Court is agreeing with you.

The concern was that the previous TSM analysis (reexam) may have been to high a standard, thus the patent survived…..as compared to the more liberal KSR framework used by the Court to kill the patent.