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Rare Examiner Request Filed for Patent of LabCorp Fame

U.S. Patent 4,940,658 relates to an assay for Sulfhydryl Amino Acids and methods for detecting and distinguishing Cobalamin and Folic Acid deficiency. This patent previously made headlines as the subject of the 2005 Supreme Court appeal that sought to explore the patentable boundaries of  “natural phenomena.” Lab. Corp. of Am. Holdings v. Metabolite Labs., 126 S. Ct. 2921, 2921 (2006) (dismissing the writ of certiorari as improvidently granted). Specifically, the defendants argued that the patent related to detecting a natural phenomena, namely, a vitamin B12 deficiency.

In 2006, third party requester General Atomics sought ex parte patent reexamination of the ‘458 Patent.(90/008,305) Of course, as patent reexamination may only consider questions of validity that relate to patents or printed publications, statutory subject matter considerations were never at issue; instead, only prior art rejections were applied in the patent reexamination.

Initially, the USPTO rejected certain claims of the ‘658 Patent, forcing the Patentee to pursue the case to the BPAI (ex parte Competitive Technologies, Inc. and The Trustees of Columbia University (Appeal 2009-005519)). The BPAI reversed the examiner’s rejection of the claims in July of 2009. Once reversed, as per usual, the examiner was ordered to withdraw the rejections, and allow the patent to exit reexamination.

Instead, the examiner opted to file a very rare, request for rehearing.
Continue Reading Examiner Requests BPAI Reconsider Decision to Reverse

Your Honor…the dog ate our first reexam request

In reviewing the cases each week that analyze staying an ongoing district court patent infringement proceeding pending a concurrent patent reexamination, I am always struck by the length of time defendants will wait before seeking reexamination. In many cases, years are allowed to pass, Markman Hearings come and go, significant discovery is conducted, etc. Equally surprising is the willingness of certain courts to look the other way on such late filing practices.

Not surprisingly, once such a late a request is filed, and the corresponding motion to stay is filed with the court, plaintiffs will point out the late timing of the reexam demonstrates how the defendant is seeking to gain a tactical advantage, and how the new proceeding delay ultimate resolution and unfairly prejudice the plaintiff. To be sure, this practice appears to be waning as defendants begin to recognize the significant benefits of an ongoing patent reexamination, aside from the potential of securing a stay. Yet, for those defendants that continue to adhere to the myopic view of patent reexamination as an unlikely escape hatch only, new and improved rationales justifying delay are required.

Recently, in CCP Systems AG, v. Samsung Electronics Corp., LTD et al. (DNJ) the defendant explained away a 1 year delay with relative ease.
Continue Reading Settlement Discussions Explain Delayed Request for Patent Reexamination

CAFC Mandamus Decision Forces Acer Dispute to CaliforniaLast Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum.As discussed in earlier posts, Nintendo is one of many recent defendants to execute the Texas Two-Step, which is characterized by a transfer out of Texas  (step 1), followed up by a motion to stay the case pending reexamination in the new forum (step 2).The ‘655 and ‘172 patents at issue in the Acer dispute are currently subject to inter partes patent reexamination at the USPTO. (95/001,284). Likewise, the ‘172 is subject to inter partes reexamination at the USPTO. (95/001,283). In both reexaminations, all claims stand rejected, and both seem destined for appeal in a matter of months. It is worth noting that as recently as September, defendants have been successful in staying cases in the NDCA based upon a mere filing of reexamination request. With the MedioStream patents on their way to BPAI appeal in a few months time, it may be that not only was a battle lost at the CAFC, but perhaps the w

Last Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.

The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum.
Continue Reading In re Acer– Half Way Home

Texas Court Likens Issuance of Continuation Patents During Litigation to Patent ReexaminationAs discussed yesterday, willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). In assessing the propriety of a post-filing willfulness allegation (i.e., after the  complaint is filed with the court) Seagate is oft cited for the proposition that a plaintiff must seek injunctive relief (i.e., preliminary injunction). However, court’s have refused to impose such a wooden rule. Instead, court’s look to the totality of the circumstances, including factors such as the existence of concluded patent reexaminations.In other words, where a patent survives patent reexamination, conduct of a defendant after issuance of the reexamination certificate may be deemed reckless. Ultratech Int’l, Inc. v. Aqua-Leisure Indus., Inc. v. Swimways Corp., No. 3:05-cv-134-J-25MCR, 2009 (M.D. Fla. Mar. 3, 2009); See also St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., 2009 U.S. Dist. LEXIS 49922, at *5-6 (D. Del. Jun. 10, 2009).Last week, in denying a defendant summary judgment motion of no willful infringement, Judge Ward of the Eastern District of Texas extended the patent reexamination rationale noted above to newly issued continuation patents. In essence, Judge Ward explained that the prior art applied in the litigation for invalidity purposes had already been laundered by the USPTO during prosecution of the continuation patent applications. In SynQor, Inc. v. Artesyn Technologies, Inc., et al. (EDTX), Judge Ward reasoned:In St. Clair, a patent holder’s post-filing willfulness allegation was permitted in spite of Seagate after the patent exited reexamination without substantially narrowed claims. SynQor’s position with the [newly issued continuation applications] is similar to St. Clair’s position with its reexamined patents. Prior to issuance of the [continuation applications as patents], SynQor had been engaged in litigation with defendants for 20 months. Any relevant prior art relied upon by Defendants must have been produced to SynQor approximately one year before the issuance of either patent. [by court order] SynQor, in turn, had a duty of candor to the USPTO to produce any prior art references material to patentability under 37 C.F.R. § 1.56(a) in its prosecution of the applications that issued as the [new patents]. Thus, at least as to art that was disclosed, Defendants’ invalidity defenses have been tested and found lacking by the PTO. The issuance of the [new patents] over Defendants’ asserted prior art creates an objectively high likelihood that the [new patents] are valid over that prior art, similar to the result of the reexamination in St. Clair. As a result, a preliminary injunction was not necessary for SynQor to assert post-filing willful infringement of the [newly issued patents]. Accordingly, Defendants’ motions for summary judgment of no willful infringement of [the newly issued patents] is DENIED.Interestingly both patents (7,558,803 & 7,564,702) subject to the Summary Judgment Motion are now being reexamined at the USPTO based in part, on art that was submitted during original prosecution. (inter partes patent reexamination Control Nos 95/001,405 and 95/001,406). However, it appears that the grant of these reexaminations was in October of 2010, perhaps too late for the summary judgment briefing. The patents issued in July of 2009, it is unclear why the defendants waited a year to initiate reexamination proceedings.This case was brought to my attention by the great Docket Navigator.

As discussed yesterday, willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). In assessing the propriety of a post-filing willfulness allegation (i.e., after the  complaint is filed with the court) Seagate is oft cited for the proposition that a plaintiff must seek injunctive relief (i.e., preliminary injunction). However, court’s have refused to impose such a wooden rule. Instead, court’s look to the totality of the circumstances, including factors such as the existence of concluded patent reexaminations.

In other words, where a patent survives patent reexamination, conduct of a defendant after issuance of the reexamination certificate may be deemed reckless. Ultratech Int’l, Inc. v. Aqua-Leisure Indus., Inc. v. Swimways Corp., No. 3:05-cv-134-J-25MCR, 2009 (M.D. Fla. Mar. 3, 2009); See also St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., 2009 U.S. Dist. LEXIS 49922, at *5-6 (D. Del. Jun. 10, 2009).

Last week, in denying a defendant summary judgment motion of no willful infringement, Judge Ward of the Eastern District of Texas extended the patent reexamination rationale noted above to newly issued continuation patents. In essence, Judge Ward explained that the prior art applied in the litigation for invalidity purposes had already been laundered by the USPTO during prosecution of the continuation patent applications. …
Continue Reading Issuance of Continuation Patents During Litigation Undermine Defense to Willful Infringement

Demonstrating Objectively Reasonable ConductThe admissibility of evidence relating to an ongoing patent reexamination in a parallel patent litigation is often times a question of both purpose and timing. Last January, we presented a four part series on this topic. These earlier posts compared the attempted litigation purpose (i.e., willfulness, inequitable conduct, claim construction, etc) of patent reexamination evidence relative to the stage of the patent reexamination (i.e., grant, first action, final action, etc).In addition to these two factors, consideration must also be given to the litigation forum.As mentioned above, one purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent. Although some courts have found that reexamination evidence defeats a finding of willfulness, these courts typically examine the status of the claims in the reexamination proceeding at the time of the willfulness determination, finding that the weight of the reexamination evidence depends on whether the reexamination proceedings are complete and whether the patent claims have undergone substantive changes in reexamination. When seeking introduction of such evidence, depending upon the court, the stage of the parallel litigation (Summary Judgment, JMOL, Pre-Trial Motions) may determine whether or not it is admissible.While evidence of a concurrent patent reexamination is consistently admitted at the summary judgment stage to demonstrate objectively reasonable behavior, certain courts are often times reluctant to admit such evidence for jury consideration. When it comes to jury exposure some courts find reexamination evidence prejudicial to the Patentee, even for a limited purpose of demonstrating objectively reasonable conduct. Since courts have wide discretion in admitting evidence that is more prejudicial than probative, it is not surprising that different courts espouse different theories on what constitutes prejudicial evidence.In Real Time Data LLC. v. Packeteer Inc., et al. (EDTX, ORDER September 30, 2009), the court explained:After reviewing the arguments of both parties, the Court agrees with Plaintiff that evidence of an incomplete reexamination proceeding is unduly prejudicial in relation to the probative value contained therein. See FED. R. EVID. 403. As this Court observed in i4i v. Microsoft Corp., even if a reexamination proceeding is somewhat probative of invalidity, the probative value of this evidence is “substantially outweighed by its prejudicial effect.”  . . . Federal Rule of Evidence 403 gives the Court broad discretion to exclude evidence where its probative value is substantially outweighed by the danger of unfair prejudice. An Office Action, such as the USPTO’s preliminary findings of invalidity of the ‘104 patent, carries with it a substantial risk that the jury will give its conclusions undue deference. See Pharmastem, 2003 WL 22244704, at *3 (finding that an opinion from a quasi-judicial or administrative body increases the likelihood that a jury will give its conclusions deference). Furthermore, even if the jury is instructed to consider the Office Action for the limited purpose of assessing objective recklessness, there is a strong likelihood that the jury would be confused as to its relevance and use this evidence in considering the validity of the ‘104 patent. In sum, although an ongoing reexamination proceeding and the USPTO’s actions therein could be considered by the Court as a factor in a willfulness determination at the summary judgment stage, during trial in a request for judgment as a matter of law as to willful infringement, and/or post-verdict,  it should not be introduced before the jury due to the highly prejudicial effect the USPTO’s actions would have on the jury.However, not every court follows the Texas model.On September 1, 2010, Judge Roslyn O. Silver of the United States District Court for the District of Arizona denied a motion to exclude evidence of the patent reexamination of the ’894 patent-in-suit in Integrated Technology Corp. v. Rudolph Technologies, Inc., Civil Action No. CV-06-02182-PHX-ROS.  Judge Silver, simply concluded that the USPTO’s action is relevant, at the very least, to the issue of willful infringement citing Lucent Tech., Inc. v. Gateway, Inc., 2007 WL 6955272 (S.D. Cal.).As demonstrated by the considerable difference in opinion here, not to mention the different attitudes as to whether or not to stay a case pending patent reexamination, the practices of particular jurisdictions are a critical factor in assessing patent reexamination strategi

The admissibility of evidence relating to an ongoing patent reexamination in a parallel patent litigation is often times a question of both purpose and timing. Last January, we presented a four part series on this topic. These earlier posts compared the attempted litigation purpose (i.e., willfulness, inequitable conduct, claim construction, etc) of patent reexamination evidence relative to the stage of the patent reexamination (i.e., grant, first action, final action, etc).

In addition to these two factors, consideration must also be given to the litigation forum.

As mentioned above, one purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent. Although some courts have found that reexamination evidence defeats a finding of willfulness, these courts typically examine the status of the claims in the reexamination proceeding at the time of the willfulness determination, finding that the weight of the reexamination evidence depends on whether the reexamination proceedings are complete and whether the patent claims have undergone substantive changes in reexamination. When seeking introduction of such evidence, depending upon the court, the stage of the parallel litigation (Summary Judgment, JMOL, Pre-Trial Motions) may determine whether or not it is admissible.
Continue Reading Hedging Against a Willfulness Finding in Litigation Parallel to Patent Reexamination

Last thing I remember, I wasRunning for the doorI had to find the passage backTo the place I was before — Hotel CaliforniaBack in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.So, is this “do-over” tactic legitimate?The dispute as to statutory interpretation relates primarily to 35 U.S.C. § 141 and 35 U.S.C. § 306, and changes brought about by the American Inventors Protection Act of 1999 (AIPA).The USPTO interprets Public Law 107-273, section 13202(d) (codified as 35 U.S.C. § 306), as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the BPAI by filing a civil suit against the USPTO in federal district court. Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.Patentees argue that the USPTO’s attempt to regulate outside conduct is ultra vires, and at odds with the plain language of 35 U.S.C. § 306. The AIPA of 1999 introduced inter partes reexamination; there was no purpose to change any aspect of ex parte patent reexamination practices. Of course, the Public Law does use the loose language “any reexamination,” but this same language was added to 35 U.S.C. § 141 as it relates to inter partes patent reexamination.Curiously, in the Regents complaint (here), the reexamination is referred to as an “application” in paragraphs 6, 10 and 11.  Regents also goes as far in paragraph 11 to ask that the Director to “issue a patent.” I can only assume the use of this improper terminology is deliberate. For example, 35 U.S.C. § 141 and 145 primarily refer to “applicants” and “applications.” In patent reexamination there are no “applicants” only Patent Holders (See 35 U.S.C. § 134). Perhaps Regents is hoping to convince the court that the distinction is meaningless;  of course it is not. Anyone that has ever assumed that extensions of time in patent reexamination are a matter of right (under 37 CFR § 1.136) learns very quickly that this distinction is quite meaningful. (contrast with 37 CFR § 1.956)PPG Comment: There has to be predictability and finality to patent reexamination, otherwise the entire justification for its existence is eviscerated.  With pendencies of patent reexamination lasting several years (as evidenced by Regents, filed in 2005), further de novo review will just prolong an already lengthy proceeding.Certainly in the past, the PTO has been inconsistent in the treatment of new grounds of rejections on appeal, after final, etc., In such instances, I would agree that Patentees are at a disadvantage.  However, the solution to this problem is not to provide a new avenue for delay, abuse and expense, but to allow Director Kappos to right the ship—which he appears to be doing.  The newly proposed appeal rules address the concern of new grounds of rejection. If a Patentee fails to seasonably present evidence otherwise, a second bite at the apple is simply unwarranted.Note: The current patent reform bill, S.515, seeks to end the debate once and for all by expressely foreclosing district court actions for Patentees appealing an adverse ruling in ex parte patent reexamination.

Back in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.

Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.

So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?

The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.

So, is this “do-over” tactic legitimate?
Continue Reading Regents of the University of California Pursue New Patent Reexamination in District Court

Change of Fortune Emboldens Defendant

When it comes to staying a district court litigation pending concurrent patent reexamination, defendants are always arguing to  halt the proceedings while plaintiffs urge the court to continue. Yet, in Se-Kure Controls, Inc. vs. Sennco Solutions, Inc. et al. (ND.Ill) the tables were turned.

Plaintiff, Se-Kure asserted three patents against Sennco RE37,590, 5,861,807 and 7,081,882. In an unrelated litigation, the ‘590 was determined to be invalid by another district court and on appeal to the CAFC. Sennco then requested a stay of the litigation based on the ‘590 development. The court granted the stay as to the ‘590 patent only. Shortly thereafter, Sennco pursued patent reexamination of the ‘807 and ‘882 patents at the USPTO (Spring of 2010). As a result of the initiation of the reexamination proceedings, both Sennco and Se-Kure agreed that the ongoing case should be stayed; the court obliged.

In May of 2010, the ‘590 patent was determined invalid at the CAFC, in July of 2010 both the ‘807 and ‘882 patent were being actively reexamined at the USPTO.

In updating the status of the case to the judge in October 2010, Sennco explained to the judge that the PTO is going to gut the claims of the 807 and 882 [Patents] as an expert hunter guts deer. (Who knew Hannibal Lecter was a patent litigator). At the same time, Sennco then asked the judge to lift the stay…wait, what?
Continue Reading Defendant Seeks to Undo Stay Pending Patent Reexamination

Cert Granted Today on Important Patent MatterSeems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision. Not surprisingly, Microsoft’s petition seized upon this issue, noting:The Federal Circuit’s longstanding rule that a challenger must prove its invalidity defense by clear and convincing evidence even “when prior art is presented to the court which was not considered by the PTO,” Uniroyal, 837 F.2d at 1050—which is to say, whether or not the PTO was aware of the prior-art evidence when it issued the patent—cannot sensibly be reconciled with this Court’s statement that the “rationale underlying the presumption . . . seems much diminished” when a defense of invalidity is based on evidence that the PTO never considered, KSR, 550 U.S. at 426.While recent cases such as Bilski and KSR presented important questions of U.S. patent law, this case may have a more far ranging impact on the U.S. patent system. Will the Supreme Court pronounce a dual standard for district courts depending upon whether the art was previously considered? Will a changing in standard further bury the USPTO in IDS filings?  What does “not considered by the USPTO” mean?Will every current defendant seek to have ongoing district court validity determinations held in abeyance/stayed until after this ruling? What will this mean for patent reexamination which already offers the lower standard to defendants, and what if any congressional intent is demonstrated by the existence of the patent reexamination statutes? Does the standard really need to be changed in light of current administrative options?  Stay tuned.

Seems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.

Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision.
Continue Reading Supreme Court to Hear Arguments in Microsoft/i4i Dispute

Inadvertent Disclosure of Reexamination Strategies Protected by CourtIn Acer Inc., et al v. Technology Properties Limited LTD et al. (NDCA), the plaintiffs are seeking a declaratory judgment of non-infringement and invalidity of TPL patent 5,809,336. Previously, the ‘336 Patent was the subject of an ex parte patent reexamination.During discovery, two emails between an inventor of the ‘336 Patent and reexamination counsel were inadvertently provided to the plaintiffs. The first email appeared to discuss the attorney’s impression of the interview, while the second email conveyed the inventor’s thoughts on issues considered in the reexamination. Not surprisingly, once produced, TPL informed the plaintiffs that the emails were privileged and should be returned. Of course, the plaintiffs disagreed, and left it for the judge to decide.The judge explained in short fashion, that:Despite Plaintiffs’ doubt, the two emails in question, “mac336.htm” and “Moore0058,” are protected by the attorney- privilege. “The attorney-client privilege protects the confidentiality of communications between attorney and client made for the purpose of obtaining legal advice.” . . . . As the emails at issue describe confidential conversations between only TPL executives (including Moore) and TPL’s attorneys about Moore’s USPTO interview in relation to the ‘336 patent reexamination, these emails are clearly protected by the attorney-client privilege.Privileged documents are often times mistakenly provided to an adversary during litigation. Given the nature of the documents, it is not especially noteworthy or surprising that the court found them to be protected by attorney-client privilege. Still, with the vast majority of patent reexamination now conducted concurrent with litigation, this case is a helpful reminder that communications should be conveyed in a manner to preserve privilege. For example, by limiting distribution of such communications to key decision makers, especially in the case of joint defense scenarios where communications may be poorly controlled.Acer was brought to my attention by the great Docket Navigator

In Acer Inc., et al v. Technology Properties Limited LTD et al. (NDCA), the plaintiffs are seeking a declaratory judgment of non-infringement and invalidity of TPL patent 5,809,336. Previously, the ‘336 Patent was the subject of an ex parte patent reexamination.

During discovery, two emails between an inventor of the ‘336 Patent and reexamination counsel were inadvertently provided to the plaintiffs. The first email appeared to discuss the attorney’s impression of the interview, while the second email conveyed the inventor’s thoughts on issues considered in the reexamination. Not surprisingly, once produced, TPL informed the plaintiffs that the emails were privileged and should be returned. Of course, the plaintiffs disagreed, and left it for the judge to decide.…

Continue Reading Communications Relating to Patent Reexamination are Privileged

SirenRationale for Lower Standard Gutted?

In 2009, Microsoft was found to have infringed i4i’s 5,787,449 patent (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). The ‘449 Patent allegedly claims certain XML translation features of Microsoft Word. An appeal to the CAFC earlier this year was unsuccessful.

Along the way to the CAFC, Microsoft sought ex parte reexamination of the ‘449 Patent (90/010,347), largely as an afterthought to hedge against a willfulness finding. Not surprisingly, since the request ignored definitions of certain claim terms of the ‘449 Patent specification, the reexamination attempt was unsuccessful (no claim changes) and all claims exited reexamination in July of this year

On August 27th, Microsoft filed a petition for certiorari questioning the lower court’s use of the clear and convincing standard relative to art not before the USPTO during prosecution of the original patent application. At roughly the same time, Microsoft filed a second request for ex parte reexamination of the ‘449 patent (90/011,198). Today the USPTO denied the second request outright, giving Microsoft and their shareholders a bit less to be thankful for this holiday season. (a copy of the denial is not yet available).

With many predicting a decision on the pending SCOTUS cert request to be imminent (i.e., this coming Monday), it seems as though Microsoft may have just had their legs cut out from under them.
Continue Reading USPTO DENIES MICROSOFT’S SECOND REQUEST TO REEXAMINE I4I PATENT