Judge Robinson Reluctantly Waits for CAFC Ruling on PTO’s Rejection of Claims in Reexamination

Scott Daniels | July 28, 2010

Last week Judge James Cohn of the Southern District of Florida withdrew a permanent injunction, deferring to a PTO advisory action finding that the patent in reexamination was invalid. On Monday, Judge Sue Robinson – in Sigram v. Cisco, 2010 U.S. Dist. LEXIS 74948 (D. Del. July 26, 2010) – with great reluctance, deferred her decision on patent validity until the CAFC determines whether the PTO correctly rejected the patent claims in two reexamination proceedings.

Sigram (SSBG) had sued Cisco in Delaware for infringement of U.S. Patent Nos. 6,954,453, 7,145,902 and 7,483,431, each related to voice over internet protocols (VoIP).  Cisco replied by requesting reexamination of the ‘453 and ‘902 patents.  (No request was filed against the ‘431 patent).  The claims were subsequently rejected and final rejections are currently on appeal at the PTO Board.  Cisco has now moved for summary judgment of invalidity, citing the same combinations of prior art that it had presented in its reexamination requests.

Judge Sue Robinson began her consideration of Cisco’s motion by acknowledging the final rejections pending at the Board, but asserting that she was not bound by those rejections since they have not been affirmed by the CAFC.

The court notes at the outset that the BPAI and Federal Circuit have not affirmed the rejection of any of the claims on reexamination and, consequently, the PTO’s findings at this stage are not binding. Moreover, the examiners’ conclusions on reexamination are not relevant to the merits of the pending summary judgment motion. This court is not, as the examiners were, a finder of fact with respect to invalidity; it may only adjudge whether SSBG has advanced sufficient evidence from which a reasonable jury could find the patents valid.

Judge Robinson added that it “is generally not the court’s practice to admit the reexamination record as trial evidence,” stating that rejections in reexamination proceedings are not binding, and “almost always more prejudicial than probative.”

On the other hand, Judge Robinson was clearly troubled by SSBG’s weak opposition to the motion for summary judgment.  She did not want to decide the motion on the basis of a lack of proof, rather than on the merits, and yet she did not want to apply the court’s “limited judicial resources crafting validity positions on behalf of SSBG.”  She resolved this ambivalence by staying her resolution of the validity of the ‘453 and ‘902 patents.

The court is generally reluctant to stay proceedings in view of concurrent reexamination proceedings, but does so in this case for several reasons. Granting summary judgment of invalidity on this record would be, essentially, founded on SSBG’s failure of proof, not necessarily the merits of Cisco’s claims. Reexamination of the ‘453 and ‘902 patents has moved to final action. As both reexaminations are nearing the conclusion of the first stage of appellate review (with the BPAI), it is very possible that the Federal Circuit will hear the case through an appeal of the BPAI decisions prior to receiving the court’s issuance of a post-trial (JMOL) opinion in this case and an appeal therefrom.

Judge Robinson continued that in “these unusual circumstances, the court will stay the issue of validity of the ‘453 and ‘902 patents pending appeal of the rejections on the reexaminations and will issue an order accordingly.”

Judge Robinson’s decision to defer to the reexamination process was clearly made reluctantly, based on the exception circumstance of the weakness she perceived of the patentee’s arguments.  It sharply contrasts with Judge Cohn’s decision which was based on his belief that the PTO might be better equipped to make such a validity decision. Yet one wonders whether, having issued the present stay, Judge Robinson might give greater consideration to PTO reexamination conclusions in the future.

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