64ChangingHorsesAs I noted last week, patents exit reexamination everyday. Most such occurrences pass without much notice to the public (aside from typical Business Wire fanfare manufactured by some Patent Owners). Yesterday was different, since the greatest invention EVER exited reexamination…no not the business method patent for the NFL Redzone Channel (probably doesn’t exist, but should), even better, the Tivo time warp patent, U.S. Patent 6,233,389….known to couch potatoes the world over as the “fast forward through commercials patent.”

This is the second go-round for the Tivo Patent in reexamination, now the subject of a very interesting dispute with Echo Star relating to a $300 million dollar judgment.

Although the NIRC is not yet posted to PAIR, it appears that claims 31 and 61 (the only claims subject to reexamination) were confirmed. Looking at the last response, the USPTO must have been convinced that the secondary indicia of non-obviousness for such a household name was persuasive; of course, there were technical distinctions made as well. Also apparent from the last response is that Tivo changed reexamination counsel once they received the final rejection.

The changing of counsel at final rejection is not uncommon, as often times Patentees seem to discount the seriousness of reexamination. Once receiving a final rejection, the reality sets in that, unlike regular prosecution, there is no RCE practice in patent reexamination. In many cases switching teams at the time of final rejection is too late. For example, claim amendments, submission of evidence, new claims, etc must be consistent with the limitations of 37 CFR § 1.116. As I pointed out to Hal Wegner yesterday relative to one of my cases, this is not a great place to be if you are new counsel as strategic options are quite limited, but you play the hand you’re dealt.

Fortunately for Tivo, the new counsel was able to continue along the same general response vector as the previous counsel, and all’s well that ends well.