Nevada Court Rules Patent Owners Control DelayBack in 2009, TableMAX IP Holdings sued Shufflemaster for infringement of U.S. Patent 6,921,337. The ‘337 Patent relates to a multi-player card gaming system. In June of 2010, Shufflemaster filed an ex parte request for reexamination citing various prior art references, including an Atari Blackjack game manual. (The Atari art is not especially relevant to this post. But, it makes me happy that I can now prove to my parents that I was not wasting my youth. Turns out I was a young visionary preparing for my career as a patent attorney through intense study of future prior art systems, take that mom!!)The request was granted on August 2, 2010. Shortly thereafter, Shufflemaster moved to stay the case. In granting Shufflemaster’s request, the court went through the familiar factors, and dismissed the plaintiff’s prejudice argument based on the nature of the ex parte proceeding. The court reasoned that Patent Owners control ex parte reexamination pendency, noting that defendants do not participate, and that appeal shouldn’t be necessary if the patent is valid.TableMAX IP Holdings, Inc. v. Shuffle Master, Inc. (D. Nev., 2009). Stay granted (here)Specifically, the court stated:Plaintiffs argue that the reexamination takes time which would cause unnecessary delay. However, this is an ex parte application by Defendant, which means that the Defendant is not permitted to have any further input. The deadlines are all in the control of the Plaintiffs. They are not required to take the maximum time to file the necessary documents or appeals. Any undue delay in the reexamination will not be caused by Defendants. If Plaintiffs’ patents are upheld, there will be no need to appeal–and Defendant may not appeal. (emphasis added)It is true that delay will not be caused by the defendants (assuming they don’t file additional requests). Yet, undue delay in the reexamination will also not be caused by the plaintiff. Patentees complain about the patent reexamination pendency of the USPTO. Only the USPTO controls the timing of office action issuance in patent reexamination and appeal pendency. Likewise, extensions of time are not granted as a matter of right in reexamination, and there is no continuation/RCE practice.Still, with such new programs as the Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings, the court’s rationale may become more compelling going forward. (the ‘337 Patent was filed prior to the effective date of the pilot progra

Nevada Court Rules Patent Owners Control Delay

Back in 2009, TableMAX IP Holdings sued Shufflemaster for infringement of U.S. Patent 6,921,337. The ‘337 Patent relates to a multi-player card gaming system. In June of 2010, Shufflemaster filed an ex parte request for reexamination citing various prior art references, including an Atari Blackjack game manual. (The Atari art is not especially relevant to this post. But, it makes me happy that I can now prove to my parents that I was not wasting my youth. Turns out I was a young visionary preparing for my career as a patent attorney through intense study of future prior art systems, take that mom!!)

The request was granted on August 2, 2010. Shortly thereafter, Shufflemaster moved to stay the case. In granting Shufflemaster’s request, the court went through the familiar factors, and dismissed the plaintiff’s prejudice argument based on the nature of the ex parte proceeding. The court reasoned that Patent Owners control ex parte reexamination pendency, noting that defendants do not participate, and that appeal shouldn’t be necessary if the patent is valid.

TableMAX IP Holdings, Inc. v. Shuffle Master, Inc. (D. Nev., 2009). Stay granted (here)

Specifically, the court stated:

Plaintiffs argue that the reexamination takes time which would cause unnecessary delay. However, this is an ex parte application by Defendant, which means that the Defendant is not permitted to have any further input. The deadlines are all in the control of the Plaintiffs. They are not required to take the maximum time to file the necessary documents or appeals. Any undue delay in the reexamination will not be caused by Defendants. If Plaintiffs’ patents are upheld, there will be no need to appeal–and Defendant may not appeal. (emphasis added)

It is true that delay will not be caused by the defendants (assuming they don’t file additional requests). Yet, undue delay in the reexamination will also not be caused by the plaintiff. Patentees complain about the patent reexamination pendency of the USPTO. Only the USPTO controls the timing of office action issuance in patent reexamination and appeal pendency. Likewise, extensions of time are not granted as a matter of right in reexamination, and there is no continuation/RCE practice.

Still, with such new programs as the Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings, the court’s rationale may become more compelling going forward. (the ‘337 Patent was filed prior to the effective date of the pilot program).