Three Items of Interest

Scott Daniels | March 23, 2011

1.   How Long can a Reexamination Request Be?

A very rough indicator of the extent to which reexamination is supplanting traditional litigation is the length of some requests.  One of the longest we have ever seen was filed Monday by CME against Realtime Data’s U.S. Patent No. 7,777,651, over 2,100 pages not counting the exhibits. 

The ‘651 patent is one of three patents that are the subject of an infringement litigation in the eastern District of Texas between those companies.  Thomson Reuters and Morgan Stanley have also been sued for infringement.  Requests have already been filed against the other two patents in the litigation. 

2.   Trial Courts Take PTO Reexamination Decisions into Account

Last Wednesday in 3M Innovative v. Gerson, 8-cv-4960 (March 16, 2011), Judge John Tunheim denied a motion by the accused infringer for summary judgment that the patent was invalid as obvious over the prior art.  Judge Tunheim began his analysis of whether the prior art references disclosed one of the steps of the claimed method by stating that the patent had been the subject of a parallel inter partes reexamination.  He noted that he was not required to defer to the PTO’s analysis in that reexamination, but then quoted from that analysis at length, concluding that he agreed with the PTO that the art did not disclose the claimed step.

 It is likely that Judge Tunheim would have arrived at the same conclusion without the reexamination.  Still, the impact of PTO reexamination decisions on infringement cases is becoming more and more evident.

3.  Court Refuses to Modify Protective Order to Allow Disclosure of Documents in PTO Reexamination

We have previously noted the difficulty that patentees face in parallel infringement litigation/reexamination proceedings, trying to balance the conflicting duties of confidentiality under a protective order and disclosure to the PTO.  Patentees may, however, also face difficulties when they try to use protective order information as a sword in reexamination.  In Ohio Willow Wood v. Alps South, 2011 U.S. Dist. LEXIS 28244, the patentee received under the protective order a set of internal documents from a third party.  The patentee believed that the documents would show copying of the claimed invention by others and thereby help its case for non-obviousness in the reexamination.  It therefore requested amendment of the protective order.

Judge Edmund Sargus wasn’t buying.  He found that the documents could be used by competitors to disparage the products of the third party.  This harm to the third party, Judge Sargus concluded, outweighed any need the patentee might have for the documents in the reexamination.  For reexamination practitioners representing patentees, the outcome in this case is less significant than is the possibility of using litigation documents to support positions in reexamination, at least where the potential harm to the third party is less compelling than in this case.  Oddly, the court’s decision did not consider the possibility of a confidential submission of information to the PTO.

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