Earlier this month, a federal judge in Florida cited to the PTO’s Ex Parte Reexamination Filing Data in denying an accused infringer’s request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc., Case No. 10-20528 (S.D. Fla. June 7, 2010). Judge Cecilia M. Altonaga pointed out that statistics show that
Sometimes Confirmed Claims in Patent Reexamination Equal Defeat
In ex parte reexamination, the percentage of reexaminations concluded with all claims confirmed is roughly 24% based upon USPTO statistics. Confirmation of original claims in patent reexamination (i.e., allowance without amendment) is highly desirable for Patentees to maintain the availability of past damages. This is because changes to patent claims during patent reexamination typically result in intervening rights that effectively foreclose the ability to pursue past damages (i.e., prior to amendment). However, the confirmation statistic only tells part of the story in many instances. A successful reexamination from an infringer’s perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation, or that rise to the level of an outright disclaimer may provide new, non-infringement positions to infringers. This past week, such a reexamination misstep was analyzed
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The Risk of Delaying Your Request For Patent Reexamination
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
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Can Inequitable Conduct be Cured Via Patent Reexamination?
Last Friday two decisions of the Federal Circuit touched upon patent reexamination practices. In this post we will examine the first decision, Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc./Shanghai Meihao Electric Inc. v. Leviton Manufacturing Company, Inc. In this decision, the question of whether or not inequitable conduct may be cured in a subsequent, post-grant proceeding of the USPTO was considered. The question before the CAFC in Levitton was whether or not a summary judgment finding of inequitable conduct in the district court should stand. Perhaps, being overly cautious in view of the pending en banc review in Theresense, Inc. v. Becton Dickinson and Co., and indicating that summary judgment of inequitable conduct is the rare case, the court reversed the lower court. Confusingly however, the majority indicated that conduct during patent reexamination may be indicative of a “good faith” intent.
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Microsoft’s Late Use of Patent Reexamination in the i4i Dispute
As has been widely reported this week, U.S. Patent No: 5,787,499 has been confirmed by the USPTO in ex parte reexamination 90/010,347. The patent has been widely reported as impacting the popular Microsoft Word software, and the subject of the dispute between i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx no. 07-CV-113). The favorable termination of the reexamination is not very surprising to those following the case as it is clear Microsoft’s use of reexamination in this case was to win a limited battle, not the war.
In our earlier post on the i4i patent reexamination, we noted that the request for reexamination was filed in November 2008. The request was granted in early 2009. Despite the fact that the Texas suit was initiated in early 2007, a request for reexamination was not filed until some 20 months later. In Texas, stays are not as commonly granted for patent reexaminations, certainly not to the extent of some of the more extreme districts. As such, it appears as though Microsoft determined the odds of obtaining a stay pending reexamination slim, and chose to follow the traditional litigation path; that is, right up until trial.
Based upon the briefing, it appears as though
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District Court vs. USPTO Patent Reexamination Analysis (BPAI Informative Opinion in Ex Parte Baxter International, Inc.)
Different standards lead to different results in patent reexamination and district court litigation
During district court patent infringement litigation between Baxter and Fresenius, Fresenius requested reexamination of Baxter’s patents relating to hemodialysis machines with touch screen interfaces. At trial, the jury returned a verdict finding the patents invalid. However, the trial judge overturned the jury’s verdict. Fresenius then appealed the decision to the Federal Circuit.
The Federal Circuit overruled the trial judge on one of the patents-in-suit, finding that substantial evidence supported the jury’s finding of obviousness. On another patent-in-suit, the Federal Circuit sided with Baxter that Fresenius had not proven patent claim invalidity by clear and convincing evidence.
In the reexamination proceeding on a third patent-in-suit, the USPTO finally rejected the patent claims forcing Baxter to file an appeal
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Joint Defense Agreements & Inter Partes Reexamination (II)
As pointed out in our earlier post on the issue, Joint Defense Agreements alone, do not result in privity for inter partes patent reexamination purposes; at least according to the USPTO.
Absent evidence of control and contribution with respect to an inter partes reexamination request, the USPTO has taken the position that cooperation for litigation purposes via JDA does not equate to privity for reexamination purposes pursuant to 37 C.F.R. §1.915(b)(7-8). Yet, in arriving at such a determination, the USPTO cautions that this conclusion is largely based on their administrative mandate, which does not provide for investigative resources and discovery power in this regard. As such, perhaps of greater concern to co-defendants is whether or not a court would find privity once a an inter partes reexamination concludes and estoppel attaches to the Requester.
Of course, due to the longevity of inter partes reexamination proceedings to date, the privity issue has yet to play out in a district court. Still, should a plaintiff recover a valid claim from an inter partes reexamination co-defendants will almost certainly
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Joint Defense Agreements & Inter Partes Patent Reexamination
–Part I–
Since the storied emergence of the patent troll (non-practicing entity (NPE) for those preferring the multisyllabic, PC terminology), it is not uncommon for an entire industry to find themselves on the same side of the defendant fence of a patent infringement suit. Where the targeted industry includes a mixture of small to large competitors, it is especially common for smaller targets to form temporary litigation alliances amongst themselves, and with their larger, deep pocket competitors.
These alliances are memorialized as written contracts or “joint defense agreements” (JDA). The purpose of such agreements is to provide for a structured exchange of information for mutual defense benefit, and protect this communication from discovery requests under the auspices of the joint-defense privilege.
When such agreements are in place, and inter partes reexamination is sought as a concurrent litigation strategy, a common concern is the applicability of the estoppel provision of 35 USC § 315(c) to the co-defendants as participants of the joint defense. As explained next, it is clear that the USPTO
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Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware
As noted by USPTO reexamination statistics, the majority of recent patent reexaminations are also involved in concurrent litigation. A recurring issue for litigants involved in such disputes is the fashioning of an appropriate protective order to adequately protect confidential materials. Such issues become particularly contentious in litigation between direct competitors.
Understandably, defendants typically seek protective orders providing maximum protection of confidential materials, forbidding litigation counsel from using these materials in the prosecution of plaintiff’s patent applications. This prohibition known as a “patent prosecution bar,” is largely standard practice. However, it is well established that patent reexamination does not involve “patent applications.” Thus, a thornier issue is presented when attempting to extend this bar to include barring participation by individuals with access to confidential information in ongoing reexamination proceedings.
Courts have taken divergent paths on the issue. Some courts
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Upcoming Post Grant CLE Opportunities
ass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”229″ height=”132″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th). The editors