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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

The USPTO can Demonstrate the What, Where, Why, and HowThe affirmative defense of inequitable conduct is commonplace in most patent disputes. Indeed, many have labeled this defense a “plague” due to its over-use by defendants. The prevalence of inequitable conduct before the district courts is especially debated on the eve of the CAFC en banc review in Therasense, Inc. v. Becton Dickinson and Co. At issue in Theresense is the very foundations upon which an inequitable conduct defense is built. The CAFC will consider the degree of materiality necessary, as well as the degree to which intent may be inferred.A key issue under consideration by the CAFC in Therasense is:What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?As an affirmative defense inequitable conduct must be plead with particularity, no matter what the CAFC decides in Theresense.  Likewise, materiality is determined from the perspective of a reasonable examiner …..so, why not just have the USPTO demonstrate what they would have done in the form of an office action in patent reexamination?As Judge Folsom explained in striking an inequitable conduct defense in TiVo v Verizon Communications on October 28th (here), the perspective of what might have happened in examination can be fairly detailed:the Federal Circuit held that for “pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id at 1327. The “who” of the material omissions and misrepresentations concerns those individuals with a duty of candor and good faith in dealing with the Patent and Trademark Office (“PTO”). Id. at 1329. The “what” and “where” of the material omissions relate to “which claims, and which limitations in those claims, the withheld references are relevant to, and where in those references the material information is found[.]” Finally, a pleading needs to state the “particular claim limitations or combination of limitations that are supposedly absent from the information of record. Such allegations are necessary to explain both ‘why’ the withheld information is material and not cumulative, and ‘how’ an examiner would have used this information in assessing the patentability of the claims.” (citing Exergen Corp. v. Wal-mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009)).As pointed out in past posts, the filing of a request for patent reexamination parallel with litigation provides significant benefits aside from simply attacking the validity of an issued patent. With Theresense perhaps making the defense of inequitable conduct a bit more challenging in the near term, it may be that office actions in patent reexamination will be increasingly valued as road maps to demonstrating materiality.

The affirmative defense of inequitable conduct is commonplace in most patent disputes. Indeed, many have labeled this defense a “plague” due to its over-use by defendants. The prevalence of inequitable conduct before the district courts is especially debated on the eve of the CAFC en banc review in Therasense, Inc. v. Becton Dickinson and Co. At issue in Theresense is the very foundations upon which an inequitable conduct defense is built. The CAFC will consider the degree of materiality necessary, as well as the degree to which intent may be inferred.

A key issue under consideration by the CAFC in Therasense is:

What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

As an affirmative defense inequitable conduct must be plead with particularity, no matter what the CAFC decides in Theresense.  Likewise, materiality is determined from the perspective of a reasonable examiner …..so, why not just have the USPTO demonstrate what they would have done in the form of an office action in patent reexamination?
Continue Reading Therasense to Amplify Demand for Patent Reexamination?

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?

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

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

The Emergence of Patent Reexamination as a Litigation Bargaining Chip As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial. In order to avoid the stay of the litigation, plaintiff SRA was asked to agree to the following conditions:1. Within 15 days of this order, SRA shall narrow its asserted claims to 20. 2. Within 30 days of this order, defendants shall narrow their invalidity contentions to 3 anticipatory references and 3 obviousness combinations per claim. 3. Within 10 days after a claim construction order has been issued, SRA shall narrow its asserted claims to 10 per defendant (no more than 12 total). 4. Within 15 days after a claim construction order has been issued, defendants may amend their invalidity contentions to substitute new anticipatory references or obviousness combinations upon a showing of good cause. To establish good cause, defendants must show why the court’s claim construction requires amendment of their invalidity contentions.Although the above conditions were ultimately proposed by the Court, it appeared that the Defendants had proposed even further limitations. In explaining the denial of the motion to stay, contingent upon the above conditions, the court alluded to further defendant proposals.Moreover, with respect to those claims that survive reexamination, defendants argue that they should not be bound by the results of the reexamination unless SRA agrees to forgo its right to an examiner interview and that they should still be permitted to argue obviousness based on the combination of prior art references that were submitted for reexamination with prior art that was not submitted.While most think of patent reexamination in simple terms as a means to stay a litigation or invalidate patent claims, these are but the most basic of uses of a much more versatile litigation tool. Indeed, patent reexamination that is conducted concurent to litigation has been illustrated by past posts as of great strategic value in pre-trial and post trial applications.  As this new trend in creative motion practice demonstrates, patent reexamination is also bargaining chip defendants are wise to embrace.

As discussed last week, defendants may opt to creatively present their motion for stay pending patent reexamination to increase the likelihood of a favorable district court determination. This tactic appears to be gaining traction as more defendants seek to reap the benefits of a concurrent patent reexamination.

In order to adapt to the defendants “sweetening of the deal,” plaintiffs are now finding themselves forced to do a bit of bargaining themselves. In Software Rights Archive LLC., v Google Inc., AOL LLC, Yahoo! Inc., IAc Search & Media, Inc., and Lycos, (NDCA) the court has seemingly mediated a bargain, and in the process, simplified issues for trial.
Continue Reading Horse Trading: Trends in Stays Pending Reexamination

Creative Motions Undermine Delay PrejudiceEarlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)In TDY Industries Inc., v. Ingersoll Cutting Tool Co., (W.D.P.A) Ingersoll filed a request seeking inter partes patent reexamination of TDY’s U.S. Patent 7,244,519 (95/001,417). The request for patent reexamination was made only two months after filing of the complaint with the court. The defendant moved to stay the case shortly thereafter, but the determination on the reexamination request remained outstanding. To address the issue of prejudicial delay, Ingersoll stipulated to a self imposed restraining order of sorts. Essentially, Ingersoll agreed not to deal in products allegedly covered by the ‘519 Patent for a predetermined time frame. In granting the stay, the court explained the weight given to the offer, noting:Turning to undue prejudice, the Court finds TDY’s complaints substantially mitigated by Ingersoll’s agreement to “no longer make, use, offer to sell, sell, import or distribute any [of the allegedly infringing] products in the United States, until the earlier of: (a) the date on which the [Patent] Examiner issues a Right of Appeal Notice . . . in the pending Reexamination, or (b) September 15, 2013, [i.e.,] 3 years away, a period longer than the average time between the filing of a reexamination request and issuance of a reexamination certificate.”Clearly, it is a rare defendant indeed that would offer a self imposed injunction in favor of a stay. Still, creative undermining of the Patentees most powerful argument, especially with respect to inter partes reexamination, may be a growing tre

Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).

Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)…

Continue Reading Stays Pending Patent Reexamination: Sweetening the Deal

EndAroundThe greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.

What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.”
Continue Reading The ITC End-Around District Court Stays Pending Patent Reexamination