Concurrent Proceedings

Subscribe to Concurrent Proceedings via RSS

Microsoft v. i4i: Legislative Intent of Patent Reexamination?The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence. Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.So, why does the USPTO use a different standard? Microsoft’s brief, as well as several of the supporting amicus briefs, cite to In re Etter,756 F.2d 852 (Fed. Cir. 1985) for the proposition that there is no presumption of validity at the USPTO in patent reexamination. Based upon this, the briefs conclude that if this lower standard is good enough for the USPTO, then why not the courts?Absent in any of these briefs is the explanation in Etter that explains the rationale behind the difference, namely:In litigation, where a patentee cannot amend his claims, or add new claims, the presumption, and the rule of claim construction (claims should be construed to save them if possible), have important roles to play. In reexamination, where claims can be amended and new claims added, and where no litigating adversary is present, those rules and their rationale simply vanish. (emphasis added) Etter at 859.So, if Congress has provided for the very relief Microsoft is requesting via patent reexamination, how is the intent of Congress not crystal clear in this respect? Can the SCOTUS provide the seemingly legislative remedy sought by Microsoft? Perhaps anticipating the argument that the patent reexamination statutes reinforce the CAFC’s reading of § 282, and demonstrate a Congressional intent to provide an alternative forum for prior art not previously considered, several amicus briefs go beyond Microsoft’s passing discussion of patent reexamination.In one supporting brief, it is argued that a final determination in a litigation under 35. U.S.C. § 317(b) would estopp the same litigant from invalidating a patent in inter partes patent reexamination. The argument is that such estoppel results in a litigant being exclusively held to the clear and convincing standard, despite the existence of the lower patent reexamination standard. It is argued that such a result is inconsistent with the legislative intent to “correct governmental mistakes,” that is, unless the standards are made the same in both proceedings.This is a very strange take on inter partes estoppel.The very point of the estoppel provisions is to thwart the conduct suggested in the brief, namely, serial attacks on a patent in different forums by a same party (i.e., harassment). Third parties should not be “resorting” to inter partes patent reexamination after losing a litigation, but instead, seeking such relief in the first instance. Further, ex parte patent reexamination is unaffected by § 317(b).The ultimate decision will likely focus on how the CAFC divined the clear and convincing standard from § 282 in the first instance. Still, the creation of the inter partes patent reexamination statutes, as well as the pending reform legislation would seem to provide ample fodder for arguing that Congress is well aware of the CAFC’s jurisprudence in this regard.For another interesting take on the interplay of patent reexamination to the § 282 dispute, note the example jury instructions in the IBM brief.This case is going to be very very interesti

The briefing in Microsoft v. i4i (Supreme Court 2011), has begun. As discussed at length previously, Microsoft has sought Supreme Court review of the following issue:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.

Interestingly, Microsoft has already tested the preponderance of the evidence standard in ex parte patent reexamination for certain prior art at issue in the i4i dispute. To date, Microsoft has failed in both attempts. First, in 90/010,347 all claims were confirmed and exited patent reexamination in July of 2010. Subsequently, a second request (90/011,198), was outright denied by the USPTO.

Microsoft, has now submitted it’s brief to the Supreme Court, and several amicus briefs have been filed taking various positions on the issue.

In their opening brief to the SCOTUS, Microsoft argues that the clear and convincing standard is essentially a creature of the CAFC, based upon the CAFC’s flawed reading of 35 U.S.C. § 282. In closing, Microsoft notes that the USPTO itself uses a preponderance of the evidence standard in patent reexamination for prior art never before considered by the agency.

So, why does the USPTO use a different standard? …
Continue Reading Patent Reexamination Statutes Before Supreme Court

Timing of Post Filing Conduct Deemed Crucial

As discussed previously, one purpose for seeking patent reexamination parallel to 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.

As Fairchild semiconductor learned the past week, it is probably best not to wait 5 years into a litigation and after a jury trial to showcase that objectively reasonable behavior.
Continue Reading Patent Reexamination After an Adverse Jury Verdict

Golf Ball Brawl Heard at BPAIYesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.So, yesterday, the Board learned all about Acushnet, a company known for their balls.The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. It was also argued that since a Markman Order on the meaning of the claim terms had been considered by the BPAI that this claim interpretation should be controlling on the USPTO. Callaway also referenced secondary indicia of non-obviousness that pointed to the sales success of the ProV1 golf balls.Callaway emphasized to the Board that the claims reciting a polyurethane embodiment were of primary importance. When prompted by the Board as to whether or not Callaway was intending to waive the claims not including this feature, Callaway agreed to waive those claims on the spot. I am guessing the Board probably would have preferred that happen before reading all of the briefs and associated examiner positions.  Strange.In rebuttal, Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims. Acushnet then explained that they (Titleist) sell more balls than anyone else because they are the market leader and that the Callaway evidence of secondary considerations had no meaningful nexus to the patented claims.The dispute will inevitably head on to the CAFC no matter the decision of the Board. If the claims ultimately fall at the CAFC (my guess), I will be very interested in the outcome of the breach of contract issue. Can Acushent really breach the contract in view of CAFC indications that a patent is “void ab initio” when found unpatentable as a result of reexamination. Standard Havens Products Inc. v. Gencor Industries Inc., 996 F.2d 1236 (Fed. Cir. 1993) (per curiam). In other words, if the patent never existed….what about that contra

Yesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.

In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.

So, yesterday, the Board learned all about Acushnet, a company known for their balls.
Continue Reading Callaway Golf’s Last Stand in Patent Reexamination

Broadest Reasonable Interpretation (BRI) an Outer Limit?

In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent.  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).

In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.

However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.…

Continue Reading CAFC Reversal Cites Patent Reexamination Claim Interpretation

Litigation Based Rationale Falls Flat Before USPTOAs the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,08

As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.

In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.

In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.
Continue Reading Admissions & Patent Reexamination Requests

Parallel Patent Reexaminations Given Little Weight at ITC

As detailed in past posts, an ongoing patent reexamination may help defendants stave off an injunction in district court. For example, in Flexiteek v. Plasteak,  (S.D. Fla. 2010) (Cohn, J.), the district court opted to stay the enforcement (order here) of the permanent injunction based upon the status of the related patent reexamination. At the ITC however, patent reexaminations are viewed as a routine occurrence.

As explored in the ITC action initiated by Tessera Inc., In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, 2008 WL 2223426 (Int’l Trade Comm’n May 27, 2008), it is next to impossible to stay an ITC proceeding pending an ongoing patent reexamination. This is due to the ITC’s statutory mandate to conclude investigations within a strict time frame.

Having lost the battle to stay the case, the remaining Tessera defendants cited the existence of the ongoing patent reexamination as a basis to avoid an exclusion order. The defendants asserted, that the public interest analysis required by 19 U.S.C. § 1337 (d)(1) was akin to the factors enumerated in eBay Inc. v. Mer-cExchange, L.L.C., 547 U.S. 388 (2006). In arguing for the Ebay factors, the defendants emphasized that money damages may be more appropriate for a “licensor” such as Tessera and that there would be no irreparable harm.

Yesterday, the CAFC contrasted the principles of equity applied in district courts to the statutorily mandated exclusion order of the ITC in Spansion v. ITC, and affirmed the ITC’s treatment of the ongoing patent reexaminations as largely irrelevant.
Continue Reading Ebay Factors Irrelevant to ITC Exclusion Orders

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

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