Patentee Establishes Priority by Reexamination

Scott Daniels | July 16, 2010

A party may be entitled at the outset of litigation to prevail on an outcome-determinative issue, such as claim construction or patent validity, but the trial judge refuses to grant summary judgment/determination.  The party is then required to proceed to trial, with uncertainty, to seek vindication.  Much quicker resolution of such issues is sometimes available through reexamination.  In a recent example, the patentee in the ITC investigation Certain Authentication Systems, Prism Technologies, established through reexamination that it was entitled to an early priority date, thereby removing the bulk of the prior art references asserted against it by the Respondent Research in Motion (RIM).

In January Prism sued RIM at the ITC for infringement of U.S. Patent No. 7,290,288.  RIM replied by asserting, both at the ITC and in a request for reexamination (filed in April), that the ‘288 patent was invalid over a long series of prior art references.  RIM argued, in particular, that the ‘288 patent was not entitled to the benefit of the filing date of an earlier application because the ‘288 patent failed to claim priority to that application.

Prism countered by filing an amendment in the reexamination to make the needed claim to priority to the earlier application.  Prism additionally moved the Administrative Law Judge Essex at the ITC to stay its investigation for 45 days pending resolution of the priority issue at the PTO.  Judge Essex denied the stay motion, applying the Commission’s five-factor standard: the stage of the ITC’s investigation, possible simplification of issues, possible prejudice to the non-moving party, the stage of the reexamination, and whether Commission resources would be used efficiently.  (The ITC’s standard results in a much greater stay denial rate than the corresponding standard in District Court).

Judge Essex denied Prism’s motion at the end of April, finding that each of the five factors was either neutral or weighed against staying the investigation.  In particular, he stated that though “it is possible that the outcome of the action before the PTO may impact the ALJ’s ruling on RIM’s MSD [motion for summary determination of invalidity over the prior art], it is clear that no issue of discovery will be determined or resolved based on the PTO’s determination.”

Earlier this month, the PTO granted RIM’s reexamination request finding that one combination of the cited references raised a substantial new question of patentability.  The PTO also found, however, that Prism was entitled to the benefit of its earlier application and that the remainder of RIM’s cited references were not available as prior art against the ‘288 claims.  Judges are technically free to disregard the PTO’s conclusion, but we would be stunned to see a court disagree with the PTO on an issue like priority.

This victory at the PTO, though quick, may have come too late for Prism because the parties had already entered into a settlement agreement and the ITC had terminated its investigation by the end of June.  Prism and RIM had also settled their parallel District Court case.

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