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- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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CAFC Urges Deference to PTO Reexamination Determinations
| March 17, 2011
Over the last two years, there is has been a growing trend among some District Courts to defer to decisions that the PTO makes on patent validity in its reexamination proceedings. This deference to the PTO is shown not only in cases where the court stays infringement litigation pending completion of a reexamination, but also where the court resorts to the PTO’s reexamination findings to resolve non-validity issues, for instance, willfulness, claim construction, materiality in an inequitable conduct defense, a patentee’s likelihood of success for a preliminary injunction motion, etc. This trend received a further nudge forward yesterday when the CAFC reversed an award of attorney’s fees against the patentee in Old Reliable v. Cornell, citing inter alia the PTO’s notice of intent to confirm the validity of the patent claims.
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Deciding Whether to Stay a Case Pending Reexamination
| March 7, 2011
The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective. A court is to apply its discretion in light of the following factors:
(1) whether discovery is complete and a trial date is set, i.e., is the case in its early stages;
(2) whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and
(3) whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused infringer for some tactical reason.
Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion.
We believe that the problem is not with the trial judges, but with the standard itself. That standard reflects two compelling, but contradictory, interests: one, the basic right of the patentee to exclude others practicing the claimed invention during the term of the patent, and the other, the obvious benefit to the court and to the parties from the PTO resolving major issues, thereby reducing the cost and complexity of the litigation. Trial judges, earnestly trying to do what is right, bring different life experience to their decisions, and therefore accord very different significance to these conflicting interests.
Edwards Lifesciences’ Litigation Team may not Participate in Reexamination
| February 25, 2011
Earlier this month we reported (here) a trend among trial courts, allowing patentees’ litigation counsel to participate in parallel reexamination proceedings. Judge Sleet of Delaware, however, bucked that trend in his order Wednesday in Edwards Lifesciences v. CoreValve et al. (Case No. 08-91-GMS) (here), ruling that Edwards’ technical expert and trial attorneys could not assist in the reexamination of the patent-in-suit.
Edwards sued CoreValve and Medtronic CoreValve for infringement of three patents, including U.S. Patent Nos. 5,411,552 and 6,582,462 for implantable cardiac valve prostheses. CoreValve replied by requesting reexamination of the ‘552 and ‘462 patents. Reexamination was granted and prior art rejections are now pending. On February 9, counsel for Edwards wrote to Judge Sleet asking for a ruling on whether its expert witness and trial counsel were permitted, under the protective order, to assist in replying to the pending rejections.
Judge Sleet has now said NO. He explained that such participation “in the reexamination would create a high risk that confidential CoreValve/Medtronic information [obtained under the protective order] would be used or disclosed.” The Judge added that “the risk of the use of confidential information and the harm that the defendants might suffer as a result far outweighs the potential harm to Edwards of enforcing the prosecution bar in the reexamination.” Edwards’ reexamination attorneys would, of course, be permitted access to any “public record relating to this case in its reexamination response.”
Prosecution Bar should not Apply to Reexamination, Judge Noel Rules
| February 4, 2011
The trend among the trial courts to permit the patentee’s litigation counsel to participate in a reexamination involving the patent-in-suit (see Shared Memory Graphics v. Apple et al., 3-10-cv-02475 VRW-EMC), continued this week in 3M v. Avery Dennsion, 310-2630-MJD-FLN.
There, the accused infringer, Avery Dennison, requested that the PTO reexamine one of 3M’s patents-in-suit. Avery also asked that the provision of the protective order that bars 3M’s in-house patent counsel, with access to “highly confidential information,” from participating in patent prosecution, also bar that counsel from participating in the new reexamination. Avery argued that reexamination is no different from routine patent prosecution, with the same potential for in-house counsel to abuse its access to confidential information covered by the protective order. 3M replied that the pending reexamination is merely “another aspect” of the pending litigation and that its in-house patent counsel should be allowed to participate in both.
Magistrate Judge Franklin Noel agreed with 3M, finding that it had “the more realistic view of the situation.” The Judge was careful, however, to limit 3M’s counsel to participation to the specific reexamination now underway and not to all reexaminations involving 3M patents.
Accused infringers need to take this trend into account when they initially propose a protective order – patentee’s counsel granted access to protective order information are likely also to be permitted to participate in any reexamination of the patents-in-suit.
Two Items of Interest
| January 5, 2011
1. Smucker Case at the Board
Subscribers may be interested in our report on the surprising outcome at the Board in the Smucker case, which was posted on IPWatchdog this Monday.
2. New Comments on Reexamination Stays
Judge Neil V. Wake made some interesting observations on the factors of “simplification of issues” and “prejudice to the patentee” in his recent decision to stay in Caron v. QuicKutz, Inc., 2010 U.S. Dist. LEXIS 137786.
He had initially denied a motion by the accused infringer to stay the case pending completion of the reexamination of the patent-in-suit, in part, because the PTO proceeding had just begun. Since then, however, the PTO has issued a non-final rejection of all the claims. Judge Wake stated that “the Court presumes that an all-inclusive non-final rejection suggests that the PTO will finally reject at least some claims. Such [a] rejection would simplify the issues in this litigation.”
Regarding the “prejudice” factor, Judge Wake took a little poke at the PTO, commenting that “the PTO’s pledge to reexamine the Caron patent with ‘special dispatch’ is boilerplate drawn from a statutory requirement,” but he then found that “it appears that the PTO has moved more quickly than usual on this reexamination,” undermining “Plaintiffs’ previous estimates of the damage that may accrue during a stay period….” The Judge also ordered the parties to report the actual progress of the reexamination.
Defendants’ Allegation of Fraud is one Reason to Deny Motion to Stay Pending Reexamination
| December 27, 2010
As we reported earlier this month, trial judges almost uniformly use the same three-factor test to determine whether to stay a suit for patent infringement pending completion by the PTO of a reexamination of the patent-in-suit. Yet judges differ greatly in how they apply that standard, often emphasizing completely different considerations. In Protective Industries, Inc. v. Ratermann Manufacturing et al., 2010 U.S. Dist. LEXIS 135757 (M.D. Tenn.), the allegation by defendants that the patent had been procured from the PTO “by fraud” seemed to weigh heavily in Judge Aleta Trauger’s decision to deny defendants’ motion to stay pending completion of the reexamination of the patent.
The patent issued in March and the patentee threatened suit in May. Defendants requested inter partes reexamination in July; the PTO found a substantial new question of patentability and concurrently rejected the claims. In November, the patentee sued, and three weeks later defendants moved to stay the case for the reexamination. Defendants answered by alleging, inter alia, that the patent had been obtained by inequitable conduct of the patentee, the inventor and the prosecuting attorney.
Judge Trauger acknowledged that reexamination had been filed in the “early stages” of the case, but concluded that this factor only “facially favors the defendants,” in view of the two other factors. First, Judge Trauger found that the patentee would be unduly prejudiced by a stay because the parties are direct competitors in the relevant market and because the average reexamination pendency of 37.6 months is too long. This delay, the Judge said, was particularly unfair since defendants had been selling the products allegedly covered by the patent claims for three years already. Moreover, the Judge found that “it is simply not fair for the plaintiff and associated individuals to be exposed to an allegation of fraud and not given an opportunity to respond for years.”
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Judge Refuses to Stay Infringement Case against Twitter
| December 15, 2010
Court rulings on motions to stay patent litigation pending completion of a reexamination proceeding are at least a weekly occurrence. And almost without exception, the trial judge applies the familiar three-part test for stay motions: whether the reexamination is likely to simplify the issues for trial, the stage of the litigation, and whether the stay would unduly prejudice the patentee. Still, it is interesting to see how an individual trial judge applies his or her own subjective impressions to these three considerations.
The subjectivity of judges’ analysis of stay motions was demonstrated by Judge Leonard P. Stark’s denial of a stay in Cooper Notification v. Twitter et al., Case No. 09-865-LPS, December 13, 2010 (D. Del.). Cooper had sued Twitter and several others in January for infringement of a single patent. In August the defendants requested inter partes reexamination of the patent, and in November the PTO granted reexamination and simultaneously rejected all claims.
With respect to whether reexamination would simplify issues for trial, Judge Stark noted that defendants had raised a number of issues – both as affirmative defenses and as counter-claims for declaratory judgment – that would not be addressed in the reexamination, specifically patent validity under §§ 101 & 112, patent enforceability, and declarations of non-infringement and unenforceability. Also, in an unusual step, the patentee Cooper stated that it would not amend its claims in reexamination, thereby eliminating the possibility of the court needing to construe the claims a second time in light of any reexamination amendments.
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Judge Attempts to “Synchronize” Trial Schedule and Reexamination Proceeding
| December 9, 2010
Trial judges face a difficult task when asked to balance the competing interests of a patentee entitled to speedy resolution of its infringement claim and the obvious desirability of waiting for the PTO to complete its reexamination of the validity of the patent. Judge Greg Kays of the Western District of Missouri may have hit on an approach that could appeal to other judges. Essentially, he plans to lift his order that had stayed the case pending completion of a reexamination, but also to set a trial date that is likely to occur after completion of the reexamination.
Earlier in Kinedyne Corp. v. Multiprens USA, Inc., Judge Kays stayed the case pending completion of a reexamination requested by the accused infringer “to conserve judicial resources while allowing the PTO to conduct reexamination.” The reexamination has reached something of a milestone: the examiner has confirmed the patentability of the claims of one patent and the dependent claims of a second patent, but maintained a rejection of the independent claim of that second patent. According to the Judge, this posture of the reexamination does not constitute a “material change of circumstances,” but he “does not intend to leave the stay in place indefinitely.”
Judge Kays has therefore ordered the parties to report on the status of the reexamination early next month. If there is “no material change in the status of the reexamination necessitating extension of the stay, the Court will lift the stay sua sponte…” The parties would then be required to propose a trial date “at a time when there is a substantial probability that the PTO will have completed its reexamination.” This synchronization of the litigation and reexamination schedules would certainly conserve judicial resources, but may be less helpful to the private parties.
Short Note on Stays and Lifting Stays
| December 1, 2010
On Monday we reported very favorably on Judge Padova’s decision in Cross Atlantic Capital Partners v. Facebook, 2010 U.S. Dist. LEXIS 124120, to lift a reexamination stay once the examiner files an answering brief on appeal to the PTO Board.
In a slightly different context Judge Claude Milton of the Eastern District of Virginia came to a similar conclusion in 01 Communique Lab. V. Logmein, Inc., et al. 2010 U.S. Dist. LEXIS 125513: he denied the motion of the accused infringer to stay the case pending a reexamination where the examiner’s confirmation of the validity of the claims was now on appeal. Judge Milton explained that “the chances of [the] BPIA reversing the PTO are remote. Moreover, awaiting a final confirmation from the BPAI could take years.”
Thus, at least two District Court judges have come to the conclusion that a stay pending reexamination makes sense, but not a stay pending a Board appeal of a reexamination. Both judges have frankly acknowledged the conflicting factors at play and attempted to balance those factors. Of course, each case raises its own considerations.
Judge Lifts Stay of Case against Facebook
| November 29, 2010
There is now a substantial body of case law on the issue of whether a court should stay a case pending completion of reexamination, but there is much less law on when a stay should be lifted. Last week Judge John R. Padova of the Eastern District of Pennsylvania, in a very thoughtful decision in Cross Atlantic Capital Partners v. Facebook, 2010 U.S. Dist. LEXIS 124120, chose the date the examiner files an answering brief on appeal to the PTO Board as a suitable moment to lift a reexamination stay.
Cross Atlantic sued Facebook for patent infringement in 2008. Facebook replied by requesting inter partes reexamination of the patent, and Judge Padova shortly thereafter stayed the law suit pending completion of the reexamination proceeding. The PTO initially rejected the claims over the prior art cited by Facebook, but later changed her mind and confirmed the patentability of most of the original claims and of the remaining claims after amendment. Cross Atlantic then moved to the lift the stay, but Judge Padova said no, finding that “each party [still] had the opportunity to submit comments, which the examiner was obligated to consider,” and that further reexamination “could result in additional complexities.” The PTO issued a Right of Appeal Notice (RAN), and Facebook filed its Appeal Brief with the Board.
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