As noted in our post yesterday, prior to their Memorial Day break, the Federal Circuit issued two decisions touching upon patent reexamination practice, the second decision is discussed below.In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:An ultimately final rejection of the claims by the PTO, would fatally undermine the legal presumption of validity of the ‘737 patent and would be sufficient by itself to moot this entire portion of the appeal and warrant affirmation of the district court’s finding of invalidity.  However, the ex parte reexamination has not yet been completely resolved.Reexamination of the ‘737 Patent was ordered December 22, 2008 (Control No. 90/010,311, request filed October 10, 2008). On May 5, 2009 a first Office Action was mailed. On July 6, 2009 a response by the Patent Owner to the first Office Action was filed. On December 23, 2009 the final Office Action was mailed containing the final rejection of claims 1-6 of the ‘737 Patent.  A Notice of Appeal was February 23, 2010.  An Appeal Brief was filed April 23, 2010 by the Patent Owner. In other words, the reexamination spanned 18 months from initial request to appeal.Interestingly, the concurrent litigation was initiated by Dow Jones (declaratory judgment) in June of 2006.  So, patent reexamination was not sought until some 28 months later in October 2008. With the litigation out in front of the reexamination by some 28 months, how can litigants realistically expect the USPTO to overtake the litigation? Simply filing the reexamination request in a timely fashion would have very likely avoided the necessity for the CAFC appeal.Yet, the late filing at issue in this case is not at all exceptional. Defendants routinely opt to wait until an adverse Markman ruling before seeking reexamination. Of course, when the USPTO does not make up for the REQUESTER’S DELAY, it is the Office that is faulted.When all else fails, blame the governme

In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010), the court affirmed the district court’s grant of summary judgment that the asserted claims of  U.S. Patent No. 6,961,737 (the ‘737 Patent, claiming a method for generating computer web pages) are invalid as obvious. The court also addressed a related patent, 6,295,530 (the ‘530 Patent).

The court noted that the ‘737 Patent is the subject of an ex parte reexamination proceeding. In the concurrent patent reexamination, claims 1-6 of the ‘737 Patent stand finally rejected as anticipated. In footnote number three of the CAFC decision, the court lamented the fact the reexamination was not yet completed through appeal to the BPAI, stating:

An ultimately final rejection of the claims by the PTO, would fatally undermine the legal presumption of validity of the ‘737 patent and would be sufficient by itself to moot this entire portion of the appeal and warrant affirmation of the district court’s finding of invalidity.  However, the ex parte reexamination has not yet been completely resolved.

Reexamination of the ‘737 Patent was ordered December 22, 2008 (Control No. 90/010,311, request filed October 10, 2008). On May 5, 2009 a first Office Action was mailed. On July 6, 2009 a response by the Patent Owner to the first Office Action was filed. On December 23, 2009 the final Office Action was mailed containing the final rejection of claims 1-6 of the ‘737 Patent.  A Notice of Appeal was February 23, 2010.  An Appeal Brief was filed April 23, 2010 by the Patent Owner. In other words, the reexamination spanned 18 months from initial request to appeal.

Interestingly, the concurrent litigation was initiated by Dow Jones (declaratory judgment) in June of 2006.  So, patent reexamination was not sought until some 28 months later in October 2008. With the litigation out in front of the reexamination by some 28 months, how can litigants realistically expect the USPTO to overtake the litigation? Simply filing the reexamination request in a timely fashion would have very likely avoided the necessity for the CAFC appeal.

Yet, the late filing at issue in this case is not at all exceptional. Defendants routinely opt to wait until an adverse Markman ruling before seeking reexamination. Of course, when the USPTO does not make up for the REQUESTER’S DELAY, it is the Office that is faulted.

When all else fails, blame the government.