Scott McKeown

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Bipartisan support and economic spin keep hope alive. With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it………Congressman Smith characterized the patent reform pending legislation as:Nearly 30 percent of American workers are found in intellectual property industries such as health care, entertainment, renewable energy and information-technology.  Patents protect this intellectual property and encourage the creativity and innovation that generate jobs and increase productivity.The theft of intellectual property costs Americans billions of dollars and thousands of jobs.  When inventors and businesses invest in research and development that result in patents, they have the right to benefit from their efforts.  The American economy benefits too by the jobs these patents create.We need to improve our patent system to better protect intellectual property and help ensure that good patents are approved more quickly.  There is bipartisan support for much-needed revisions to our patent system, which has not been significantly updated in over half a century.Patent reform appears to have bipartisan support, and can be sold to the public as a form of economic stimulus. It is very unlikely we will see it this year….but you can bet it will be sold to us, in some form, next year….but then again, we have been saying that for many yea

With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.

One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it…………
Continue Reading Patent Reform Still on the Table

Participation in USPTO pilot program held against PatenteeIn August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination.In my earlier posts on the pilot program I questioned the affect participation in this program would have on a district court’s decision to stay a parallel litigation. The impact of a Patentee’s participation in the pilot program was recently considered in Brass Smith LLC v. RPI Industries Inc. (D.NJ).Perhaps realizing that NJ is rather “stay friendly,” the plaintiff decided to cooperate with the USPTO and waive their right to a patent owner response period. Brass informed the court of the participation in the program, stating that the reexam would now move faster. Brass also proposed that RPI agree to stop selling/marketing the infringing products until the reexam was completed in exchange for the stay. (see my post of last month on the self imposed injunction tactic). The thinking of Brass seemed to be that, since  the NJ court was likley to grant the stay anyway, Brass may as well try to angle for some sort of benefit.  Ignoring, the attempt at striking a bargain, the court just stayed the case, in part, citing the accelerated reexamination schedule as justification.The court’s opinion and order (here)  summarized the background events, as:On October 18, 2010, counsel for BSI sent a letter to the Court and to counsel for RPI, indicating that it has agreed to participate in the PTO’s “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings,” which is “designed to reduce the pendency time of reexamination proceedings.” (Doc. No. 59, hereinafter “BSI Letter”). BSI’s letter further asserts that BSI has contacted RPI and offered to resolve RPI’s motion by stipulating to a stay of the case during the pendency of the reexamination proceedings, so long as RPI refrains from selling, referencing, or showing the allegedly infringing product during the same time period. (Id.). According to the letter, as of October 18, 2010, RPI has not responded to BSI’s proposal.In performing the familiar factor based analysis to determine the relative inequities of staying the litigation, such as potential prejudice to the plaintiff as a result of the reexamination pendency delay, the court explained:….. “any delay would not be for such a protracted or indefinite period to constitute an abuse of discretion.” Cima Labs, Inc. v. Actavis Grp. HF, C.A. No. 07-893 (DRD), 2007 U.S. Dist. LEXIS 41516 (D.N.J. June 7, 2007) (internal citations omitted). Indeed, BSI itself recently informed the Court that it agreed to participate in the PTO’s Pilot Program, which may reduce the pendency of the reexamination by approximately three to five months. (emphasis added)Many patent reexaminations are sought, at least in part, for the purposes of obtaining a stay. As such, it appears that the decision to participate in the pilot program may be very carefully considered going forward.

In August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).

Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination.

In my earlier posts on the pilot program I questioned the affect participation in this program would have on a district court’s decision to stay a parallel litigation. The impact of a Patentee’s participation in the pilot program was recently considered in Brass Smith LLC v. RPI Industries Inc. (D.NJ).

Perhaps realizing that NJ is rather “stay friendly,” the plaintiff decided to cooperate with the USPTO and waive their right to a patent owner response period. Brass informed the court of the participation in the program, stating that the reexam would now move faster. Brass also proposed that RPI agree to stop selling/marketing the infringing products until the reexam was completed in exchange for the stay. (see my post of last month on the self imposed injunction tactic). The thinking of Brass seemed to be that, since  the NJ court was likley to grant the stay anyway, Brass may as well try to angle for some sort of benefit.  Ignoring, the attempt at striking a bargain, the court just stayed the case, in part, citing the accelerated reexamination schedule as justification.
Continue Reading Chilling Effect of the USPTO Patent Reexamination Pilot Program?

Hedging against post grant invalidity Would you ever file a patent application without dependent claims?  I wouldn’t….and for obvious reasons. Dependent claims help present more detailed aspects of a claimed invention. In the prosecution context for example, dependent claims present a variation in claim scope to the examiner. Once searched by the patent examiner, in many cases dependent claims are identified as allowable and provide a simple amendment option, often leading to patent issuance. Likewise, once issued as a patent, dependent claims provide more detailed fallback positions that serve as a hedge against an invalidity attack. It is a rare patent indeed that issues without dependent claims.Yet, there exists another form of claim that also provides a narrowed presentation of inventive features that is increasingly avoided in patent applications; the means plus function claim. Many practitioners now advocate the avoidance of such claims, but why?Well, for one, litigators prefer broader, non-mpf claims.  Likewise, mpf claims complicate an infringement case due to their unique claim construction rules. Still others will point to recent case law finding such claims indefinite.  Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (Fed. Cir. 2008)While these criticisms are valid, lost in the debate is the fact that in many cases such claims are more likely to withstand invalidity challenges, such as during patent reexamination….isn’t that the point in having narrower claims?Surely, with cases such as Aristocrat exhibiting the pitfalls of poorly drafted specifications, drafting an application that will support mpf claims can be challenging.Still, as demonstrated in the Funai appeal discussed yesterday, such claims are more likely to survive a challenge due to their relatively narrow interpretation. While Funai was affirmed on some grounds, the detailed analysis of the mpf claims at issue demonstrates the significant difference in claim construction used for mpf claims. In patent reexamination, the broadest reasonable interpretation (BRI) is not available for these more narrow claims. Instead, features of the specification MUST BE imported to these claims.As 112 issues are not considered in patent reexamination for original claims, the dangers of Aristocrat indefiniteness are non-existent at the USPTO. Likewise, with most patents subject to litigation now being subject to patent reexamination, a hedge against a liberal application of BRI is quite useful.The level of difficulty in drafting a patent application that will support proper mpf claims should not discourage Patentees from including these valuable claims as a hedge against invalidity. As most patents of mid-1990s vintage now demonstrate in patent reexamination, these claims can be the difference between winning and losi

Would you ever file a patent application without dependent claims?  I wouldn’t….and for obvious reasons. Dependent claims help present more detailed aspects of a claimed invention. In the prosecution context for example, dependent claims present a variation in claim scope to the examiner. Once searched by the patent examiner, in many cases dependent claims are identified as allowable and provide a simple amendment option, often leading to patent issuance. Likewise, once issued as a patent, dependent claims provide more detailed fallback positions that serve as a hedge against an invalidity attack. It is a rare patent indeed that issues without dependent claims.

Yet, there exists another form of claim that also provides a narrowed presentation of inventive features that is increasingly avoided in patent applications; the means plus function claim. Many practitioners now advocate the avoidance of such claims, but why?

Well, for one, litigators prefer broader, non-mpf claims.  Likewise, mpf claims complicate an infringement case due to their unique claim construction rules. Still others will point to recent case law finding such claims indefinite.  Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (Fed. Cir. 2008)

While these criticisms are valid, lost in the debate is the fact that in many cases such claims are more likely to withstand invalidity challenges, such as during patent reexamination….isn’t that the point in having narrower claims?…

Continue Reading The Post Grant Magic of Means Plus Function Claims

ITC Invalidity Holding Reversed in Patent ReexaminationFunai Electric’s U.S. Patent 5,329,369 was previously asserted in the International Trade Commission (ITC) and the Central District of California against a group of TV manufacturers including Vizio. (As per usual, the district court actions were stayed in favor of the ITC action).The Administrative Law Judge (ALJ) of the ITC determined that claims 19 and 21 (along with others) of the ‘369 Patent were invalid. The Commission declined to review the ALJ’s findings and the matter was not appealed to the CAFC (although Vizio did appeal issues relating to another Funai patent). Also, in the European Patent Office (EPO), the foreign counterpart was likewise invalidated.Yet, in a parallel ex parte patent reexamination of the ‘369 Patent, claims 19 and 21 were found valid by the USPTO. (appeal decision here referencing confirmed claims). But how can claims found invalid by one government agency be resurrected from the dead by another?Clearly, the USPTO is bound by a final Federal District Court holding of patent invalidity, as such, reexamination and/or reissue of such a patent will not be ordered. MPEP 2242 (III (C)). However, the MPEP makes no mention of any binding effect of an ITC determination. Therefore, to understand the impact of an unfavorable ITC determination on other forums, one must look to the Commission’s congressional mandate.In 1974, the ITC mandate was revised to include the ability to analyze the validity of patents before them. In the Senate Report that accompanied this legislative change it was emphasized that:The Commission’s findings neither purport to be, nor can they be, regarded as binding interpretations of the U.S. patent laws in particular factual contexts. Therefore, it seems clear that any disposition of a Commission action by a Federal Court should not have a res judicata or collateral estoppel effect in cases before such courts.Consistent with the above identified mandate and legislative intent, decisions of the CAFC have consistently made clear that decisions of the ITC on patent issues have no preclusive effect in other forums.  Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568 (Fed. Cir. 1996).  Thus, the USPTO action in the Funai patent reexaminations is consistent with CAFC precedent.By choosing to proceed at the USPTO despite an adverse ITC invalidity holding, Patentee’s have the option to revisit any such holding in this increasingly popular forum through patent reexamination. By creating evidence of a contrary opinion, for example, future defendants would be unlikely to rely on the ITC holding alone as evidence of objectively reasonable behavior to fend off a charge of willful infringement.I will discuss the substance of the Funai BPAI appeal decisions in more detail tomorrow. (See itcblog.com for more background on the affect of ITC determinations

Funai Electric’s U.S. Patent 5,329,369 was previously asserted in the International Trade Commission (ITC) and the Central District of California against a group of TV manufacturers including Vizio. (As per usual, the district court actions were stayed in favor of the ITC action).

The Administrative Law Judge (ALJ) of the ITC determined that claims 19 and 21 (along with others) of the ‘369 Patent were invalid. The Commission declined to review the ALJ’s findings and the matter was not appealed to the CAFC (although Vizio did appeal issues relating to another Funai patent). Also, in the European Patent Office (EPO), the foreign counterpart was likewise invalidated.

Yet, in a parallel ex parte patent reexamination of the ‘369 Patent, claims 19 and 21 were found valid by the USPTO. (appeal decision here referencing confirmed claims). But how can claims found invalid by one government agency be resurrected from the dead by another?
Continue Reading ITC Invalidity Holding Reversed in Patent Reexamination

Patentee’s Rescinding of Earlier Made Disclaimer Deemed “Gamesmanship” Back in June of this year, I discussed the case of Beneficial Innovations, Inc. v. AOL, LLC. et al., 2-07-cv-00555 (TXED) (Ward, J.). The previous post explained that even where a patent reexamination results in a win (i.e., confirmed claims), the creation of additional prosecution history estoppel/disclaimer may result in a surrender of claim scope. In Beneficial, U.S. patents 6,183,366 & 6,712,702 are currently asserted. These patents relate to an interactive network information service in which ”unrequested“ advertising presentations are delivered to a network node. An ex parte patent reexamination was filed against the ‘136 Patent in October of 2009 (90/009,593)In their Markman briefing, Beneficial asserted that unrequested defined “not requested by the user.” Conversely, the defendants asserted that unrequested defined “not sent in response to a signal from a user’s computer” In April of this year, a Markman Order was issued accepting Beneficial’s construction.Unfortunately, one week prior to the Markman Order, Beneficial’s response in the parallel ex parte patent reexamination appeared to advance the defendants’ Markman definition before the USPTO. Annoyed by the seeming inconsistency, Judge Ward issued a revised Markman Order at the end of June (adopting the defendants construction). In mid-July, in response to a Final Rejection, Beneficial filed a further response that clarified the earlier statement to the USPTO. Shortly thereafter, Beneficial sought a clarification from Judge Ward with respect to the revised Markman Order.In response, Judge Ward clarified one thing, namely, that he is not one to mess with…..Throughout the short opinion (here), Judge Ward takes issue with the timing of Beneficial’s actions. He notes that the initial inconsistency was filed “a week before this court’s claim construction order.” With respect to Beneficial’s filing of their revised statement to the USPTO on July 14, 2010, Judge Ward states “[i]t is important to note that this correspondence to the USPTO was a mere two weeks after the Court granted the first motion for reconsideration.” (June 30, 2010). Finally, with respect to Beneficial’s request to revisit the Markman issue, Judge Ward explains “Then merely two weeks after this correspondence with the USPTO, on July 30, 2010, Plaintiff filed a motion for clarification of the Court‟s construction of the term “unrequested” from the Court‟s previous motion for reconsideration.”Based on the perception that Beneficial’s timing evidenced a deliberate attempt to game the system, Judge Ward refused to disturb his late adoption of the defendants’ definition. Judge Ward summarized the issue as:Plaintiff argues that “[t]his patent holder‟s statement to the PTO regarding its definition of the phrase “input by the user” is binding in this litigation.” (Dkt. No. 273 at 8.) The Court disagrees. The Court rejects this attempt by Plaintiff to alter the Court‟s construction of “unrequested” by making after-the-fact, self-serving statements to the USPTO in reexamination. To allow Plaintiff‟s argument to succeed would open the door for “gamesmanship” where patentees could take advantage of reexamination to alter the Court‟s construction of disputed claim terms after the Court has issued its construction.PPG COMMENT: Beneficial’s response to the non-final action (February 5th) in patent reexamination was due to the USPTO on April 5th, one week prior to the Markman Order. Likewise, with a Final Action issued by the USPTO on May 14, 2010, Beneficial’s second response was due on July 14th. Both of these filing deadlines were driven by the USPTO, not any ulterior motive of the Patentee. With the Final Action being issued so quickly after Beneficial’s first submission, there did not seem much in the way of opportunity to submit an earlier clarification (it appears the issue of the inconsistency was briefed while the Final Action remained outstanding). Sadly for Beneficial, it appears that they are just a victim of a poorly worded initial response.As to gamesmanship, the reexamination at issue was requested roughly two years after the initial complaint. A further request for ex parte patent reexamination was recently filed on July 27, 2010 (90/011,117), thus, the defendants do not have much room to complain in this regard.Finally, the rescinding of an earlier disclaimer seems to call into question the “clear disavowal” necessary to limit the claim term at issue.  See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed.Cir.2003). (If the applicant mistakenly disclaimed coverage of the claimed invention, then the applicant should have amended the file to reflect the error, as the applicant is the party in the best position to do so. The applicant, however, never retracted any of his statements . . .)Beneficial may have a good chance of sorting this out on appeal to the CAFC, still, their imprecise wording in patent reexamination will amount to a very expensive miss

Back in June of this year, I discussed the case of Beneficial Innovations, Inc. v. AOL, LLC. et al., 2-07-cv-00555 (TXED) (Ward, J.). The previous post explained that even where a patent reexamination results in a win (i.e., confirmed claims), the creation of additional prosecution history estoppel/disclaimer may result in a surrender of claim scope. In Beneficial, U.S. patents 6,183,366 & 6,712,702 are currently asserted. These patents relate to an interactive network information service in which ”unrequested“ advertising presentations are delivered to a network node. An ex parte patent reexamination was filed against the ‘136 Patent in October of 2009 (90/009,593)

In their Markman briefing, Beneficial asserted that unrequested defined “not requested by the user.” Conversely, the defendants asserted that unrequested defined “not sent in response to a signal from a user’s computer” In April of this year, a Markman Order was issued accepting Beneficial’s construction.

Unfortunately, one week prior to the Markman Order, Beneficial’s response in the parallel ex parte patent reexamination appeared to advance the defendants’ Markman definition before the USPTO. Annoyed by the seeming inconsistency, Judge Ward issued a revised Markman Order at the end of June (adopting the defendants construction). In mid-July, in response to a Final Rejection, Beneficial filed a further response that clarified the earlier statement to the USPTO. Shortly thereafter, Beneficial sought a clarification from Judge Ward with respect to the revised Markman Order.

In response, Judge Ward clarified one thing, namely, that he is not one to mess with…..
Continue Reading Texas Court Frowns Upon Patent Reexamination Gamesmanship

220px-Wingmanass=”alignleft size-full wp-image-4165″ title=”220px-Wingman” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/220px-Wingman.jpg” alt=”220px-Wingman” width=”220″ height=”177″ />Whether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims.  In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).

Would Solicitor participation in these cases have protected the institutional interests of the BPAI?  The answer is not clear.  However, absent Solicitor participation, the BPAI’s record will be left to speak for itself.
Continue Reading No Interference from USPTO Solicitors at the CAFC?

Equitable Intervening Rights a Function of USPTO Delay?

Whether a narrowing patent reissue application or broadening patent reissue application, USPTO pendency delay is significant. As discussed yesterday, narrowing reissue applications appear to  fare no better than regular U.S. applications, and broadening reissue applications have been known to take as long as 10 years to complete.

Of course, amendments made during patent reissue will result in absolute intervening rights defense for potential infringers. As damages for such amended/new claims will not begin to accrue until issued, Patentees have nothing to gain by dallying during patent reissue prosecution. In fact, as demonstrated by a recent district court ruling, significant pendency delay may in fact create a further limit on available damages for amended/new claims under the doctrine of equitable intervening rights.
Continue Reading Practical Impact of Patent Reissue Pendency

Narrowing Reissue Applications Seem to Fare No Better than Regular ApplicationsLast week I explained the disappointing state of broadening reissue application pendency over the first 5 years. As shown in the charts above (click to enlarge images), I analyzed the 129 narrowing patent reissues filed since 2005. Not surprisingly,  narrowing reissues applications fare much better

…

EchoStar Seeks to Exploit Examiner Comments in Letter to CAFCA few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010.  TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC.  Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal. In their letter (here), EchoStar argues that the reexamination creates additional, substantial open issues regarding infringement. EchoStar argues that TiVo has disclaimed claim scope of several key terms. In arriving at this conclusion, EchoStar attempts to seize on certain examiner language provided in the notice of the intent to issue the reexamination certificate (NIRC, 10/6/10).In the NIRC (here), the examiner explained that:Specifically, Patent owner has now clarified and further defined the meaning of the claim terms “transform object”, “source object”, “sink object”, and “automatic[ally] flow control[led]” in light of the understanding of the terms provided in the ‘389 specification. The examiner now interprets these terms in light of Patent owner’s arguments, and as expressly disclosed in the ‘389 specification. (emphasis added)In their letter, Echostar has focused on the language clarified and further defined as an indication that the USPTO somehow relied upon a disclaimer of claim scope to confirm the TiVo patent.While the examiner explained that the supplemental declaration materials filed by TiVo further clarified and refined previously made arguments (i.e., original declarations), this does not necessarily mean that any disclaimer was made. In fact, knowing full well the impact of any statements made during the patent reexamination on the ongoing dispute with EchoStar, it seems very unlikely that such a disclaimer would exist in fact. Likewise, unless clear and unequivocally made by TiVo in their filings, any examiner comments in the NIRC are not binding on TiVo. Salazar v. Proctor & Gamble Company, 414 F3d. 1342 (Fed. Cir 2005)Of course, the ultimate question of whether or not disclaimer exists is not really important to EchoStar, they would just like to derail the appeal and get a remand, or a reversal based on “additional, substantial open issue

A few weeks back, I reported on the second emergence of the TiVo Time Warp Patent (U.S. Patent 6,233,389) from patent reexamination. The time warp patent, as most know, is the subject of a very interesting dispute with Echo Star relating to contempt. (and more importantly, $300 million dollars).

With the second reexamination all but concluded (90/009,329) , TiVo informed the CAFC of the development by letter on October 13, 2010.  TiVo noted in their communication that the conclusion of the reexamination has no direct bearing on the contempt issue currently before the CAFC.  Last Tuesday, EchoStar responded with a letter of their own in which EchoStar (surprise surprise) asserts that the conclusion of the reexamination has everything to do with the issue on appeal. …
Continue Reading EchoStar Debates TiVo Patent Reexamination Result

Two GraphOn Patents Seemingly Lost, More to Come?In May of this year, a first suit between GraphOn Inc. and Juniper Networks was stayed pending the conclusion of patent reexamination proceedings relating to U.S. Patents 6,061,798, 5,826,014 and 7,028,336. A few weeks back, Juniper Network also was able to secure a stay of the second of the two suits (different GraphOn Patents, U.S. Patents 7,249,378; 7,269, 847; 7,383,573; and 7,424,737 )  pending further patent reexamination proceedings at the USPTO. The stay of the second suit was also entered shortly after the transfer of Texas (The famed Texas Two Step). The two suits relate to network firewall technology as claimed in the GraphOn patents. The dispute between the two companies has been ongoing for several years (prior to transfer to the NDCA related suits were filed in Texas, Delaware and Virginia).In late June, in a very surprising development to say the least, the ‘014 Patent (ex parte patent reexamination 90/009,179) went abandoned for failure to file a compliant appeal brief. A reexamination certificate was subsequently printed in August canceling all 51 claims. GraphOn filed a petition to revive in July, yet as the record stands right now, it appears that the ‘014 patent is finished. (Incidentally, the determination of compliant briefs in ex parte reexamination is now handled by the Board).Fortunately for GraphOn their portfolio consists of several patents…. but so far, those don’t seem to be faring much better.This past Wednesday, the rejection of all claims of the ‘798 Patent (an issued continuation of the ‘014) was affirmed by the BPAI (decision here). In the decision, the Board faults the quality of the submitted declaration evidence, notes that GraphOn did not even bother to Reply to the Examiner’s Answer, and attempts to read features into the claims.  It seems GraphOn is struggling significantly with the patent reexamination and appeal  process.The reexamination of the second group of patents has not yet beg

In May of this year, a first suit between GraphOn Inc. and Juniper Networks was stayed pending the conclusion of patent reexamination proceedings relating to U.S. Patents 6,061,798, 5,826,014 and 7,028,336. A few weeks back, Juniper Network also was able to secure a stay of the second of the two suits (different GraphOn Patents, U.S. Patents 7,249,378; 7,269, 847; 7,383,573; and 7,424,737 )  pending further patent reexamination proceedings at the USPTO. The stay of the second suit was also entered shortly after the transfer of Texas (The famed Texas Two Step). The two suits relate to network firewall technology as claimed in the GraphOn patents. The dispute between the two companies has been ongoing for several years (prior to transfer to the NDCA related suits were filed in Texas, Delaware and Virginia).

In late June, in a very surprising development to say the least, the ‘014 Patent (ex parte patent reexamination 90/009,179) went abandoned…
Continue Reading GraphOn Patent Portfolio Sinking in Patent Reexamination