Scott Daniels | September 6, 2011
How does one assess the strength of a reexamination request? The typical request is intimidatingly long and technically involved. It is simply impossible, without devoting an enormous amount of (billable) time, to estimate the likelihood that a specific request will force the cancelation or amendment of the claims. Still, if only a bit of insight, not “metaphysical certitude,” is needed, there are certain signs that even a casual observer will spot.
(1) Do all the primary references or all the secondary references recite essentially the same subject matter? If so, the patentee might be able to overcome all the rejections by citing a single patentable distinction over the prior art, just as in original prosecution, an applicant can sometimes dispatch a large number of rejections with a single argument.
(2) Does the cited prior art disclose the feature of the claimed invention that appeared to be the basis for allowance of the original application? If so, there is likely to be a substantial new question of patentability and chances for a successful reexamination are greater.
(3) Do the prior art columns of the claim charts quote the references or do they simply repeat the wording of the claims? If the latter, the technical analysis in the reexamination request might be weak.
(4) Are the proposed rejections for anticipation or obviousness? Even if the latter, the proposed rejections might be strong, provided that there is a KSR reason for combining the references.
(5) Is legal argument needed to establish the references are prior art? Or are the references prior art under § 102(a) or § 102(e)? If either, the patentee might have an easy legal, non-technical, basis for overcoming the prior art.
These considerations certainly do not result in a precise, accurate prediction of the outcome of a reexamination, but they do give some insight and are certainly as good as many of the systems for valuation of patents.
So how do Google’s requests for reexamination of Lodsys’ U.S. Patent Nos. 7,222,078 and 7,620,565 rate? Pretty well, actually. For both patents, the requests assert that each of five prior art references anticipates the claims in question. For both patents, the requests focus on the prior art disclosure of the claim limitations that were the examiner’s basis for allowing the claims in the original prosecution. Although the claim charts repeat the wording of the Lodsys claims, they also quote directly from the prior art references. In the case of the ‘078 patent, two of the references are prior art under 102(b), three under 102(e); for the ‘565 patent, one reference under 102(b), four under 102(e). Still, two of the 102(e) references have filing dates long before the Lodsys filing, so that it seems unlikely that Lodsys could prove an earlier invention date and therefore remove those references as prior art.
Again, the methodology employed here is crude (though less so than the patent valuation systems that count the number of claims or the number of references cited), but certainly better than placing the requests on a scale to measure their weight.