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.

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.