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

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

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

Equitable Intervening Rights a Function of USPTO Delay?

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

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

As a quick review, 35 U.S.C. 252 presents two flavors of intervening rights in the reexamination/reissue context: absolute intervening rights, and equitable intervening rights.

The doctrine of absolute intervening rights requires that claims of the reexamination/reissue that are not substantially identical to those of the original patent, cannot lead to liability for any infringement pre-dating the newly added/amended claims of the reexamination/reissue.

On the other hand, the doctrine of equitable intervening rights (“may provide”) is judicially administered in accordance with the principles of equity to protect business investments made prior to the issuance of the newly added/amended claims.

So, for example, if a significant investment were made by a defendant prior to patent reissue, and the defendant was found to infringe the new/amended claims, the damages available could be limited to a reasonable royalty under principles of equity. In determining whether or not equitable intervening rights might apply, the passage of time since the time of initial investment is a critical factor.

Last week, in denying a temporary restraining order in Medicis Pharmaceutical and Corp, and AlyZan Inc., v. Stiefel Laboratories Inc., (here) the defendant argued that the plaintiff should not be entitled to equitable relief (i.e., TRO) based on unclean hands. One aspect of this defense was that the doctrine of equitable intervening rights applied to the claims of reissue patent RE 41,134.  In this regard, the court explained:

. . . .Stiefel claims it should not be barred from making and selling a product when substantial preparations were made prior to the issuance of an asserted reissue patent. The asserted’ 134 patent is a reissue of the ‘275 patent. In other words, the patentee sought to correct any defects in the original patent. Medicis sent a cease and desist letter to Connetics (Steifel’s predecessor) in 2004 about the Velac® formula (predecesssor of Veltin™) possibly infringing the ‘275 patent (predecessorto the ‘134 patent). Connetics responded and explained why it did not believe infringement was occurring. The patentee then initiated reissue proceedings in November 2004, informing the PTO that Connetics’ assertions of invalidity caused the applicant to reevaluate the claims in the patent. The patent was not reissued until February 2010 – six years later– and all the claims in the reissued ‘134 patent were “substantially changed.”

In the intervening six years, Stiefel asserts it acted “in good faith” to develop Veltin™ and worked “diligently” with the FDA to approve the product. Defendant states that it has invested substantial resources in research and development, clinical trials, marketing, etc. and should not be shut down on the eve of its launch date simply because Medicis chose to pursue a reissue of the ‘275 patent rather than enforce it. (emphasis added)

Clearly, the lengthy pendency of patent reissue proceedings is working in favor of potential infringers.

Narrowing Reissue Applications Seem to Fare No Better than Regular ApplicationsLast week I explained the disappointing state of broadening reissue application pendency over the first 5 years. As shown in the charts above (click to enlarge images), I analyzed the 129 narrowing patent reissues filed since 2005. Not surprisingly,  narrowing reissues applications fare much better in terms of pendency (close to 80% being concluded within 5 years).Apparently, without recapture muddying the waters, and with the more familiar narrowing of claims, the Examining Corps seems to have less difficulty moving these applications along. …albeit at around the same pace as a routine patent application. With most narrowing reissue applications involving highly valued patents, a shorter pendency or “special dispatch” seems to be in order.As to the low number of narrowing reissues (129) relative to broadening (745), it seems plaintiffs are more willing to try their luck with the heightened invalidity standards of district courts for most “errors made without deceptive intent” rather than revisit the USPTO for several more yea

nreissue

Last week I explained the disappointing state of broadening reissue application pendency over the first 5 years. As shown in the charts above (click to enlarge images), I analyzed the 129 narrowing patent reissues filed since 2005. Not surprisingly,  narrowing reissues applications fare much better in terms of pendency (close to 80% being concluded within 5 years).

Apparently, without recapture muddying the waters, and with the more familiar narrowing of claims, the Examining Corps seems to have less difficulty moving these applications along. …albeit at around the same pace as a routine patent application. With most narrowing reissue applications involving highly valued patents, a shorter pendency or “special dispatch” seems to be in order.

As to the low number of narrowing reissues (129) relative to broadening (745), it seems plaintiffs are more willing to try their luck with the heightened invalidity standards of district courts for most “errors made without deceptive intent” rather than revisit the USPTO for several more years.

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. 

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 issues.”

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 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 begun.

Recapture and Formality Issues Bog Down Important Cases As shown in the charts above (click to enlarge images), we analyzed the 745 broadening patent reissues filed since 2005. A surprising 200 applications of the 745 were ultimately abandoned. While many of these applications may have been seeking to secure a claim scope that was precluded by prior art, it may also be that a significant number fell victim to the frustrations of reissue practice. The lowermost chart above factors out abandonments as a true conclusion, demonstrating that only 20% of broadened reissues are concluded within 3 years of filing. When compared to the special dispatch accorded to patent reexamination, these important applications clearly fare a great deal worse.The data for narrowing reissues shows slightly better  timeliness, perhaps due to the absence of recapture doctrine concerns. Data for narrowing reissues will be posted in the coming days.I understand the PTO is considering creating a special unit for patent reissues, much like was done for patent reexamination. My guess is more reissue would be filed should these applications be treated with the importance they deserve.If anything, the pendency problems plaguing patent reissue demonstrate the value of maintaining pending continuation applications.

reissue

As shown in the charts above (click to enlarge images), we analyzed the 745 broadening patent reissues filed since 2005. A surprising 200 applications of the 745 were ultimately abandoned. While many of these applications may have been seeking to secure a claim scope that was precluded by prior art, it may also be that a significant number fell victim to the frustrations of reissue practice. The lowermost chart above factors out abandonments as a true conclusion, demonstrating that only 20% of broadened reissues are concluded within 3 years of filing. When compared to the special dispatch accorded to patent reexamination, these important applications clearly fare a great deal worse.

The data for narrowing reissues shows slightly better  timeliness, perhaps due to the absence of recapture doctrine concerns. Data for narrowing reissues will be posted in the coming days.

I understand the PTO is considering creating a special unit for patent reissues, much like was done for patent reexamination. My guess is more reissue would be filed should these applications be treated with the importance they deserve.

If anything, the pendency problems plaguing patent reissue demonstrate the value of maintaining pending continuation applications.

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. 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.

c-man-repair

Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.

Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as  Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.”  As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.

Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues? Continue Reading Curing Infringement Issues Through Patent Reexamination?

ass=”alignleft size-full wp-image-4062″ title=”CG98″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/CG98.png” alt=”CG98″ width=”175″ height=”229″ />On October 13th, the Federal Circuit held in Solvay v. Honeywell International that, in order for prior invention to invalidate a patent under 35 U.S.C § 102(g)(2), the prior invention must have been conceived in the United States. The precedential decision (here) relates to ozone friendly fluorocarbons commonly used in refrigeration and heat storage systems. At issue in the appeal was whether or not Honeywell’s reproduction of technology, conceived by a Russian contractor, invalidated Solvay’s patent claims under 102(g)(2).[1]

In reversing the district court’s finding of invalidity under 35 U.S.C § 102(g)(2), the CAFC concluded that Honeywell’s employees did not qualify as “another inventor” under section (g)(2) because (1) they were not involved in the conception of the technology and (2) those who had conceived the invention were outside of the United States.

102(g)(2) requires prior invention in the U.S. In contrast, 102(g)(1), which governs patent interferences, allows for prior invention in foreign countries as permitted by 35 U.S.C. § 104. So would there have been a different outcome given the facts reported in the decision if this dispute had occurred in a patent interference?

Continue Reading CAFC Denies Outsourcing of Inventorship to Foreign Countries

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)

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 trend.