Reexamination

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Historical Patent Reexamination Statistics Belie Modern Practices

When considering whether or not to stay a parallel litigation in view of a pending patent reexamination a district court will consider several factors. While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. For this reason, especially when it comes to inter partes patent reexamination, the average length of the proceeding can be instructive to the Court.

Hoping to convince the Court of a prejudicial delay, Patentees will argue that inter partes patent reexamination takes on the order of 5-7 years to complete through appeal, citing those cases that have been fully contested through appeal. Defendants, on the other hand, will cite to published USPTO statistics that indicate inter partes patent reexamination pendency to be an average of 36 months, including appeal. (As pointed out previously, the 36 month statistic is skewed by the small number of completed inter partes patent reexaminations that have been fully contested through appeal).

However, regardless of the statistical theory advanced to the court, what neither theory considers is that historical statistics are weighed down by years of past USPTO practices. As one plaintiff found out recently, the USPTO has greatly streamlined the processing of inter partes patent reexamination relative to past practices.…

Continue Reading Patent Reexamination Speed Impresses District Court

Court Favors Staying Troll Suit

The existence of a competitive relationship between the litigants is often times an important consideration to district court judges considering a stay pending patent reexamination. When weighing the equities whether or not to grant a motion to stay the court action pending USPTO reexamination the trend has been to deny motions for direct competitors. This is because, when staying a litigation dispute between competitors, there is a danger that the delay could cause erosion of market share, customer loyalty, or other intangible business factors….not so with patent trolls.

Patent trolls, also known as “non-practicing entities” to some, do not compete with their infringement targets in the marketplace. Not surprisingly, courts have begun to emphasize the “troll” factor as favoring a stay of the litigation.
Continue Reading Patent Reexamination Can Stop Patent Trolls in Their Tracks

USPTO Denies Petition for Further Review

The epic battle between Microsoft and i4i effectively ended with the Supreme Court ruling upholding the clear and convincing standard. Yet, some lingering arguments at the USPTO were only recently finalized relative to i4i’s U.S. Patent 5,787,449.

As a reminder, Microsoft had made two attempts to invalidate the ‘449 Patent at the USPTO. A first ex parte patent reexamination was favorably concluded to i4i without amendment to the original claims (90/010,347), and the second request was denied outright (90/011,198) on November 24, 2010.

On December 27, 2010 a Rule 1.181 petition was filed to seek supervisory review of the examiner’s November denial. This petition was denied…

Continue Reading Microsoft’s Failure in Second Reexamination Attempt of I4I Patent Final

Shift in BPAI Fact Finding Necessitates New Rejection

Back in February, In re Stepan (or In re Side-steppin if it helps you remember the case) was argued before the CAFC. In a previous post, I explained how this case demonstrated a problem addressed by the 2010 proposed rule package for practice before the BPAI. Namely, the shifting in rejection grounds during appeal relative to that of the originally applied rejection. The newly proposed Rules attempt to liberalize the manner by which an Applicant/Patent Holder may challenge a “new ground of rejection” as presented in an Examiner Answer. The idea being, it is unfair for the Office to change course once prosecution is closed as no new rebuttal evidence may be entered.

Unchecked, a modification to the Office’s fact finding/legal theory in an Examiner Answer or BPAI decision can be quite prejudicial during patent reexamination. This is because,…

Continue Reading Shift in Grounds of USPTO Reexamination Rejection Examined by CAFC

High Court Denies Inventors Plea to Punish Law Firm

Perhaps surprising no one but the petitioner, the strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton came to an end Monday on the steps of the nation’s highest court.

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin)…

Claim Changes in Patent Reexamination & Reexamination Certificates

When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent reexamination as a cost effective mechanism to dissolve the dispute.

In many patent disputes, patent reexamination is conducted in parallel to a district court or ITC proceeding. Of course, as the reexamination proceeding advances, the reexamination prosecution history creates new defensive opportunities such as, additional prosecution history disclaimer and/or estoppel arguments; enhanced, or additional  inequitable conduct positions; and new non-infringement arguments.

Claim changes and/or cancellation are a boon to defendants as potentially mooting current infringement contentions or at least creating an intervening rights defense.  Yet, it is important to keep in mind that such claim changes are not effective until the proceeding is concluded.
Continue Reading When is a Claim Finally Dead in Patent Reexamination?

2011 AIPLA Economic Survey

 The cost of legal services will vary, depending upon the expertise of the attorney, market rates in a given area, and the unique aspects of a given project. In an attempt to provide a rough gauge on the expected costs in a given market and law firm size, the American Intellectual…

Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately

The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America Invents Act. As many features of the legislation will require a significant USPTO rule making effort, most of the provisions of the Act will not become effective until the 1 year anniversary of enactment. In this regard, the USPTO has reportedly penciled in September 20th as the target date for the expected enactment of the Leahy-Smith America Invents Act.

While most provisions of the Act will not take effect until a year after enactment, there are some very important changes to patent reexamination practice that will become effective immediately…..likely, in a few weeks time.…

Continue Reading Inter Partes Patent Reexamination Standard to Tighten in 30 Days

Parallel Patent Reexamination Qualifies as Newly Discovered Evidence Under Fed. R. Civ. P. 60(b)

It is well established that the USPTO utilizes different standards of evidence and claim interpretation in patent reexamination. Likewise, there is no presumption of validity in patent reexamination. For this reason, district court/ITC claim construction findings (i.e., Markman Orders) are not binding on the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Yet, the findings of the USPTO with regard to claim construction can have significant impact on the court rulings.

For example, this past January, in St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential), the CAFC reversed a lower court claim construction ruling, based in part, on the findings of USPTO examiners in patent reexamination,…

Continue Reading Can a Favorable Patent Reexamination Record Undo a Markman Order?

Inter Partes Patent Reexamination Filings Pose Challenge to Lodsys

Late Friday, Google announced that it had filed inter partes patent reexamination requests against two of the now infamous Lodsys patents, 7,222,078, and 7,620,565. Over the past few months, Lodsys has been contacting iOS and Android application developers seeking license fees, and has begun suing others to enforce their patent rights (the patents are purportedly directed to application transactions among providers and users). An infringement suit was filed against 11 defendants in Texas, including EA, Take-Two Interactive, Atari and Rovio (of Angry Birds fame).

As a licensee, Apple has attempted to intervene in the ongoing litigation arguing that app developers are covered under the terms of their license. Google, perhaps unencumbered by the contractual obligations of Apple with respect to challenging validity, has opened up a new battle front for Lodsys at the the USPTO.

As ed.com/gadgetlab/2011/08/google-android-lodsys-patent/”>explained this past Saturday at Wired.com, Google announced the filing stating that:

We’ve asked the US Patent Office to reexamine two Lodsys patents that we believe should never have been issued. . …Developers play a critical part in the Android ecosystem and Google will continue to support them. [quote attributed to Google Senior Vice President and General Counsel, Kent Walker]

So, now what?…

Continue Reading Google Takes on Lodsys Patents at USPTO