quietLast week, the Delaware District Court stayed the litigation proceedings in  Enhanced Security Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No. 09-571-JJF, (June 25, 2010) at the defendant’s request in view of two ongoing patent reexaminations. As the  Delaware court statistically seems more receptive to stays than say, the Eastern District of Texas Court in Marshall Texas, this development is not at all surprising. 

Of more interest to me, is a recent petition decision (April 15, 2010) in the inter partes reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).

In responding to the first action, the Patentee filed a reply over the 50 page limit identified in ( 37 CFR 1.943). Recognizing this problem, the patentee, at the time of filing the reply, simultaneously petitioned for waiver of the page limit under 37 CFR § 1.183. In response, the Third Party filed an opposition petition under 37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition under 37 CFR § 1.183 to waive the rules to allow for consideration of their § 1.182 petition.

In deciding the patent owner’s petition, the Office of Patent Legal Administration (OPLA) granted the Patentee a waiver of the 50 page limit. Curiously, however, OPLA expunged the third party opposition petitions from the record and took the position that third parties have no right to oppose procedural filings of patent owners in inter partes reexamination proceedings. OPLA reasoned that the inter partes patent reexamination statutes only permit a single response to substantive issues of patentability. While I don’t necessarily disagree with OPLA’s action, I find the reasoning to be curious, as I have never seen an inter partes patent reexamination in which third party opposition petitions were not filed.  In fact, the USPTO’s Electronic File System (EFS) has a selectable document code and corresponding description “Reexamination– Opposition filed in response to petition.” ……….What Gives?

Specifically, the petition decision (found here) provides that:

As noted above, on February 5, 2010, third party requester filed a petition under 37 CFR 1.183 requesting waiver of the rules for entry of its petition under 37 CFR 1.182 filed in opposition to patent owner’s January 29,2010 petition under 37 CFR 1.183.  However, the rules cannot be waived to provide the third party requester the right to file a paper at the present stage in the ‘489 proceeding.

Pursuant to 35 U.S.C. § 314(b)(2), the third party requester in an ordered inter partes reexamination proceeding has a statutory right to once file written comments to a patent owner’s response to an Office action on the merits.

Whether a patent owner’s petition under 37 CFR 1.183 for suspension of the rules is grantable is an issue that goes to procedure and a showing of equities, rather than to the merits. While enactment of the inter partes reexamination statute was for the purpose of expanding a third party requester’s participation in the merits of the proceeding, there is no indication whatsoever in the legislative history of the inter partes reexamination statute that the requester was granted any right to challenge the granting of a petition under 1.183 for suspension of the rules in an inter partes reexamination proceeding.  Such a right was not provided in the enactment of the inter partes reexamination statute (or in any of its precursor bills), and there is no evidence to indicate that enacting such a right was ever contemplated by Congress.

37 CFR 1.183 permits waiver of the regulations in an extraordinary situation when justice requires. Requester’s February 5, 2010 petition, however, seeks to waive a requirement set forth in 35 U.S.C. § 314(b)(2), which allows requester comments only in response to a patent owner’s response on the merits. Accordingly, the Office is without statutory authority to consider the substance of third party requester’s February 5, 2010 petition paper. In this respect, third party requester stands on a footing no different from any other member of the public who wishes to challenge a procedural action taken by the Office in a proceeding.  The patent statute simply does not provide for such intervention.

As I mentioned above, the filing of opposition petitions under § 1.183 is almost routine and explicitly supported by EFS. I have even seen some Third Parties go as far as filing a § 1.183 petition to oppose a patent owner’s request for extension of time. Are Third Parties permitted to simply file petitions on procedural matters which do not oppose petitions filed by the Patentee? In other words, is the opposition petition just a tool for the Patentee alone?

If the position of the Office is that Third Party (i.e., Requester) opposition petition filings on procedural issues are improper, a clarification via Federal Register Notice is in order.  Absent such clarification, the influx of seemingly frivolous Third Party petitions will continue as a matter of course in inter partes patent reexamination.