Flawed Patent Reexamination Request A Matter of National Importance?The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California 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. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted seem slim to say the least. The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.As I have commented in previous posts, 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. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. Further, 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 added 22 new claims, this certainly was not harmful.Strange that this dispute has been pursued this f

The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance. 

As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.”  The California 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. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)

Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:

Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.

Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted  seem slim to say the least. 

The Plaintiff has previously urged that the USPTO does not discipline practitioners for such “sham” actions, and that the harm done to the plaintiff is beyond the reach of the agency. The plaintiff has offered little more than conclusory statements with regard to the alleged malicious prosecution and harm. Seems to me that even if the case were allowed to proceed the plaintiff would have some difficulty showing that the request was truly malicious; likewise, the harm is also quite speculative.

As I have commented in previous posts, 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. (based on request referencing  products, not the underlying publications). Very odd behavior for a defendant so wronged by a “sham” filing. 

Further, 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 added 22 new claims, this certainly was not harmful.

Strange that this dispute has been pursued this far.