A Case for Suing the Wrong LawyersLast March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The court determined that the state law cause of action was preempted by federal law (i.e.,  the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC.By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.In addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?At issue in the reexamination was whether or not the submitted references qualified as prior art. The Lockwood patent arguably benefited from a 1984 priority date (based on a parent CIP). A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984. The Requester provided no explanation of the right to priority of each claim (in order to apply the manual as intervening art), nor how the public use of a system could be considered in patent reexamination. (See 90/006,623 for more information, particularly the response filed 7/20/05 and the original request).Interestingly, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood also added 22 new claims.The request that was filed would never be accepted today, it lumps rejections together, fails to identify key dates, claim interpretation, etc…but things were different prior to the creation of the Central Reexamination Unit in 2005. To be sure, the request was poorly reasoned, and should have been denied. Yet, even assuming Lockwood is allowed to pursue their claim at the state level (which seems very unlikely based upon the tenor of the CAFC questioning last week at oral argument) what is the real economic harm? Will Lockwood argue that they settled for too low an amount, would Sheppard counter with the seemingly poor legal advice Lockwood was following as a contributing factor?Seems to me that Lockwood sued the wrong attorneys if they were truly fooled, and harmed, by this alleged “sham” reque

Last March, a guest post opined on the impact of fraudulent patent reexamination requests. The post primarily focused on a dispute originating from the California state court, Lockwood v. Sheppard, Mullin, Richter & Hampton. The author examined the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders. Several commentators have commented on the case this week, now before the CAFC. (oral argument recording here)

In Lockwood, the plaintiff accused a defendant law firm (Sheppard Mullin) of malicious prosecution relating to an alleged “sham patent reexamination” in a California State Court. The court determined that the state law cause of action was preempted by federal law (i.e.,  the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC.

By way of background, patent reexamination was initiated against Lockwood in 2003, Lockwood agreed to stay their ongoing  litigation with the third party requester, settling the dispute shortly thereafter.

In addressing the “sham” merits of the patent reexamination, Lockwood chose not to filed a Patent Owner Statement disputing the order. Moreover, Lockwood could have petitioned to have the reexamination vacated as ultra vires, but did not. Very odd behavior for a defendant so wronged by a “sham” filing. One is left wondering whether Lockwood is simply having buyer’s remorse over a low settlement, and rather than suing their own attorneys for malpractice, went after the other side?

At issue in the reexamination was whether or not the submitted references qualified as prior art. The Lockwood patent arguably benefited from a 1984 priority date (based on a parent CIP). A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984. The Requester provided no explanation of the right to priority of each claim (in order to apply the manual as intervening art), nor how the public use of a system could be considered in patent reexamination. (See 90/006,623 for more information, particularly the response filed 7/20/05 and the original request).

Interestingly, the reexamination was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood also added 22 new claims.

The request that was filed would never be accepted today, it lumps rejections together, fails to identify key dates, claim interpretation, etc…but things were different prior to the creation of the Central Reexamination Unit in 2005. To be sure, the request was poorly reasoned, and should have been denied. Yet, even assuming Lockwood is allowed to pursue their claim at the state level (which seems very unlikely based upon the tenor of the CAFC questioning last week at oral argument) what is the real economic harm? Will Lockwood argue that they settled for too low an amount, would Sheppard counter with the seemingly poor legal advice Lockwood was following as a contributing factor?

Seems to me that Lockwood sued the wrong attorneys if they were truly fooled, and harmed, by this alleged “sham” request.