Sham Reexamination Requests and Federal Preemption

Lockwood v. Sheppard Mullin (Fed. Cir. 2010)

This is an interesting case that is pending before the Federal Circuit. The focus of the appeal is whether a patentee has any cause of action for a third-party's baseless filing of a reexamination request. The patent laws themselves offer no remedy so Lockwood turned to California State Court – alleging that the Sheppard Mullin law firm should be held liable for Malicious Prosecution, Interference, and Fraud by filing their reexamination request. Lockwood argues that "[Sheppard Mullin lawyers] chose to violate the strict duty of candor required before the USPTO by making deceptive misrepresentations about the nature of purported 'prior art' in two Requests for Reexamination. Respondents filed the Requests to gain a tactical advantage during infringement litigation, in furtherance of their stated aim of putting Lockwood 'out of business,' and without any reasonable basis in patent law."

The District Court granted a 12(b)(6) motion to dismiss – holding that the Federal Patent Laws and administrative structure of the USPTO preempted any cause of action in court against a sham reexamination request filed by a third party. Several law professors are involved with the litigation. Professor Jay Thomas (Georgetown) testified on behalf of Lockwood (stating that the PTO is "an agency in crisis" whose examiners are "overworked, overextended, undertrained, and underpaid"), and Professor David Hricik (Mercer) led a group of law professors who filed an amicus brief supporting Lockwood's position.

The leading Supreme Court case on the merits is Buckman Co. v. Plaintiffs' Legal Committee, 531 U.S. 341 (2001). In that case, the Court held that Buckman's state-law claim for fraud on the FDA was preempted by the Food Drug & Cosmetics Act because the "federal statutory scheme amply empowers the FDA to punish and deter fraud against the Agency, and that this authority is used by the Agency to achieve a somewhat delicate balance of statutory objectives." The FDA holds and actually asserts relatively greater power than the USPTO with respect to fraud on the office. As Professor Hricik writes, "since 1992, the Patent Office has not investigated inequitable conduct, and … cannot award civil damages or recover damages caused to the Office by frivolous filings."

Off the Cuff: One aspect of the law that is unclear to me is how this case differs from the ordinary prosecution malpractice situation. If the USPTO administrative and disciplinary structure preempts a civil action for patent attorney bad-behavior in reexamination filings, it seems that it would also preempt a civil against by a former client against an attorney broke USPTO ethical rules and injured his client. What is the difference?

Update: Raymond Mercodo forwarded a copy of his academic article: The Use and Abuse of Patent Reexamination: Sham Petitioning Before the USPTO.

132 thoughts on “Sham Reexamination Requests and Federal Preemption

  1. Just thought I’d let comments exhaust themselves before making sure that everybody knows about this:

    link to scribd.com

    I know, the situation is different, etc., etc..

    I expect that everybody knew about it already, I just thought I’d put it up for the person who has been on vacation in Madagascar for 6 months.

  2. All the same, this brings into focus what may be an increasingly important issue: the frivolous use of reexamination requests so as to harass, or even destroy, a patent owner. As the stakes in patent litigation continue to get higher, we can expect to see more such behavior. Thank goodness for the US presumption of validity; in countries like India, for instance, such a presumption doesn’t exist, and patentees can be not only harassed and financially crippled, but also more easily deprived of their intellectual property.

  3. >>is doing their client a grave disservice.

    We are never doing our clients a disservice much less a grave disservice by acting ethically.

  4. And pray tell how did they get (MORPHING LIKE THE GREAT BLUE EYED BABY )to where they are at the USPTO? Cushy, pushy, easy peasey Japanesee.
    And I’d appreciate it if you would stop breaking my sentences up. It’s over. To continue to violate my free speech by taking and putting words into my mouth to suit your pleasure is only harming what little cause you have. Cause you wanted to protect your own. And cause you wanted my property. And cause you wanted to destroy me and my Family. Cause you did! and still are!

  5. You have got to be kidding. This is as Political as it gets. Read the posts over this last year as my First , Thirteenth and Fourteenth amendment rights were violated. I can still remember the fight out side that was And for the Post by Brooks to state that Lobbying for the cover up and breaking the Law while doing so is legal, is ridiculous.I can still remember like it was yesterday the GOP and the Dems in a shouting match about setting someone free. Remember those terrible names. Now they weren’t so terrible… were they?

  6. From the post, “If the USPTO administrative and disciplinary structure preempts a civil action for patent attorney bad-behavior in reexamination filings, it seems that it would also preempt a civil against by a former client against an attorney broke USPTO ethical rules and injured his client. ”

    In my expert legal opinion, one needs to have that sentence taken out and shot.

  7. Mark:
    How is it that the Noerr-Pennington doctrine provides guidance on this. I thought Noerr-Pennington doctrine precluded anti-trust liability for politcal lobbying activities and use of court procedures that advance anti-competitive behaviour.

  8. Preemption is hogwash. The First Amendment and Noerr-Pennington doctrine make this a tough row to hoe when properly analyzed. As David Boundy noted this will end up like a Handgards claim: only works if objectively baseless.

  9. Wonderful – So let’s just stack up your errant beliefs against what Iza posted even with out crediting me – Ya still come out like a big joke there Kenny. But please, feel free to continue to dismiss out O hand the legislative record and the Courts which back me up. It must be nice in your lala land where you only see what you wanta see. Never mind those nice men with the white jackets – theza got a special suit just for you.

  10. Ping you lost credibility long ago. Unlike Ned I don’t give you the benefit of being an idealist. I simply believe that you either don’t have a grasp of the issues at stake or worse, your intellectual capacity is wanting. Whatever the rationale for some of you ideas I simply dimiss them out of hand.

  11. And I may be just a Constituent, but if Congress doesn’t tell the people now, 5 cents across the board on Gas. Liquor Beer 15 cents immediately. A 3 year freeze on this, with an option to continue. New Cars taxed 5%. And anything and everything People can do without should also be taxed. TELL THEM THEY VOTED FOR CHANGE! SUCK IT UP! how else are we going to correct the mess!
    If I were the President or Congress, this would be very easy to do. Every single one of you vote it in. And every single one of you will not be singled out. You all need to worry about this Country, not your next 4 Years.

  12. Ned,

    Since when is payin attention to what Congress and the Courts have said bein “idealist”?

    Re-read my posts – read the case law I done observed for ya. This is just another case where shtt hits the fan when examiners fail to do their job.

    Let’s try a novel concept here – accountability.

  13. I have mentioned this before, but when in the early 40s Congress considered “oppositions,” they declined, primarily because they knew the system could be abused and the little guy could not cope with the expense of an opposition while his business was in its infancy.

    Why the experience and considerations of Congress in early 40s was ignored when re-examinations were authorized in the early 80s and currently when Congress is considering again the issue of oppositions is interesting. But it does show that the influence of big business upon Congress is more powerful than ever.

  14. ping, you remain a idealist in face of evidence that big business is ruthless and the PTO has no effective means to call a halt.

  15. Heelllooo – Kenny and Ned

    Try reading my posts – ya might look a bit less foolish – unless ya like all that extra attention ya be gettin.

  16. Ken, while there might be some examiners sympathetic to the plight of the patent owner who might be permanently tied up in the patent office facing repeated serial re-examinations, I think most of them could care less.

    Once one allows a legal way to keep the patent owner tied up permanently in the patent office expending hundreds of thousands of dollars per year defending his patent, why not do so? The opportunity to crush the patent owner by choking off his air supply (so long as the patent is under Reexamination, very few will license the patent) has to be taken. The expense to file a re-examination request is minor compared to the cost of defending a re-examination.

    Sic the government on the patent owner. Kill him with the expense of litigation while taking no risk yourself because you can file these re-examinations anomalously. It makes no sense not to.

    The opportunities for abuse of the system were known from the very beginning – and yet we proceeded. It has to be clear then that we fully intended the known abuse that followed and fully intended for the mighty and powerful to crush the weak. Those who did this should be ashamed of themselves.

  17. There are several fixes to this situation. At first I would have brought a Federal Court Action seeking injunctive relief and brought the pendant state claims of malicious prosecution. Concurrently with that I would have filed a 1.183 petition seeking assistance from the Director. Between the Director examining the situation and Rule 11 Sanctions facing the requester this would have ended the scenario pretty quickly. What I would never have done, however, was to bring a state court action, becuase I don’t believe the client could acquire sufficiently quick relief.

  18. Danielle S.
    I think that you are incorrect, because the Code of Federal Regulations allow the Commissioner, excuse me I am old school, the director, to institute a re-examination procedure sua sponte. The ability to institute must include with it the ability to terminate, because that which the Director can commence, the Director can terminate. As a result, were it found that re-examinations were being filed, e.g., serially, the Director should be entitled to pre-empt those re-examinations by instuting one sua sponte and then terminating the same. In addition, once an individual apprises themselves of the jurisdiction of the USPTO, e.g., by commencing an action, they are a defactor practitioner and, therefore, subject to all of the ethical duties of an attorney. In short, there are Attorneys in Fact and Attorneys at Law, the former being an non-licensed attorney acting as an attorney, while the former is an attorney admitted to the bar. Similarly, there are practitioner’s in fact and practitioners at law. So don’t think just because one is not a licensed practitioner that one cannot be liable for violating the ethical rules of the USPTO. However, this in no way addresses the concurrent liability that an attorney faces for violating the PTO ethical rules, which may result in state discipline and/or state tort liability.

  19. Hey Ping,
    If what is typed on the thread of a Site is filtered to hide what was said for the whole year, as they again expired yet another Statute given by the District Court because they claim the District Court is not equipped to handle such cases, it gets better and better.

  20. Just for jollies – more O the courts agreein with me:

    In assessing the risk that an erroneous deprivation will ensue, we take notice that a patent examiner is charged with the experience appropriate to making independent determinations. See Fahey v. Mallonee, 332 U.S. 245, 253-54, 91 L. Ed. 2030, 67 S. Ct. 1552 (1947), wherein the Supreme Court was reassured by the knowledge that the challenged administrative determinations were made by disinterested experts. The PTO similarly carries a “heavy responsibility to be exercised with disinterestedness and restraint”. Id. at 253-54.

    Patlex Corp. v. Mossinghoff, 771 F.2d 480, 485 (Fed. Cir. 1985)

  21. Ned – Ya still miss the point I be makin: the examiner is not doin their job, if their determination of a substantial new question of patentability is not done with the care and diligence that a patented item deserves. Don’t forget that while in reexam, a patent does not enjoy the presumption of validity, that same patent does have that presumption prior to reexam being OK’d.

    As Mercado points out – reexam was supposed to insulate the patentee and “protect patentees from having to respond to, or participate in
    unjustified reexaminations
    “.

    If you would pay attention to the message, rather than react (like your pal in age Kenny) to the mess-anger – ya might have noticed that we are on the same side of the issue here. I have long made observations that a very high bar to SNQ be proper. The Fed Circ agrees with me – see Patlex II, 771 F.2d 480, 487.

    Ya got a cite to that Therasense brief?

    Ya might get a rise outs somethin I saw the other day talkin bouts how the USPTO is under Federal Investigation for destroyin documents relatin to petitions and quality control meetins. Seems like there be some bad apples in the Office rather afraid of what they have done.

  22. Mercado’s, a Lockwood employee’s, article is powerful and overwelhming. He points out just how abusive reexaminations are even without fraud and that it might be high time for reform; but with the growing use of outright fraud by requestors, the time has come.

    For those of you who have been following my posts for the last couple of years, I consider reexaminations and the abuse of patent owners to be one of the most important issues we now face in the patent system. The representatives of big infringers like to call patent owners trolls and worse, implying something unsavory about them in general. But on the other hand, the abuse of money and power is on display for all to see in their abusive use of reexaminations.

    Once I litigated against AT&T in the antitrust cases. I became intimately aware just how big business can use government to step on the little guy. I grew to loathe AT&T, and am one of the few people you will ever meet who truly appreciates the value of antitrust laws.

    But I tell you this, we need to do something as members of the patent bar to stop the abuse of the patent system by the too-easy use of reexaminations and the apparently growing use of fraudulent requests to not only to get them started, but to limit or invalidate their claims.

    Who will stand against corporate power? I suspect, very few. I found at the AIPLA that that organization appeared to be in the pocket of big business. If not the AIPLA, who?

  23. Mooney, suppose you read a patent claiming continuity to six different parents. Being a good patent attorney you understand that each individual claim must be FULLY supported by ONE of these parents, and that that particular claim has the effective filing date of its supporting parent.
    Should you only file re-examination art that is effective against the oldest potential effective date? Or should you file art that might be effective against a given claim, depending on its effective date?
    Suppose you file art that is effective depending on the effective date assigned the claim. Should you add arguments as to why that claim should be assigned a particular effective date? Are you even ALLOWED to lobby for assigning a particular effective filing date to a given claim, in a request for re-exam?

  24. Ping, pang, pong, something like that:

    As I said, the examiner reviewing the request takes the representations of fact to be true. He is not at that stage examining the merits.

    The PTO said this in a brief they filed in the Therasense case as represted to the Feds in this case.

  25. ” as you so often say in justification of fraud and malicious prosecution

    Wrong-O Ned. I say that the examiner gotsa do his job – cause I be right – cause that be the truth – Are you saying otherwise? It certainly aint anyone’s job to determine whether a reexam proceeds or not, now is it smart guy?

    Now let’s correct your other error in logic here – In no way, shape or form do I promote or elicit fraud and malicious prosecution.

    As to the verification of the evidence provided – how is the examiner NOT supposed to independently verify anything? I says – if the examiner cannot independently verify it – heza gotsa throw it out. Why you think he gotta take anything given to him at face value? Criminy, aint ya been listening to the wake up calls? – this stuff can come in anonymously and such – ya tellin me that you would take somethin in at face value under those situations? Where ya be pullin this duty of candor and good faith from?? – ANYONE can submit anythin they wants – there is no such duty that ya think be in play.

    Ya see – that’s where ya be off – ya be thinkin that the stuff bein submittin be akin to stuff submitted in a court proceedin – IT SIMPLY AINT.

  26. Pingerino,

    According to Lockwood (I just listened to the oral argument), the requestor manipulated dates on a publication; misrepresented that another reference was a publication when they knew it was not; and misrepresented the contents of at least one reference.

    Now, assuming the examiner reviewing the request is “doing his job properly” as you so often say in justification of fraud and malicious prosecution, just how is he to know that the documents before him were forged and not publications, for example. At this stage of the game, the examiner takes the representations of the requestor at face value, and assumes they are true. According to the PTO itself, such preliminary examination relies on the duty of candor and good faith to assume the statements made are true.

  27. The rational answer has to be yes because if it was no then patent rights become meaningless as we can all simply pump data (true or false) endlessly into the PTO with impunity and leave every patent in limbo for as long as we want.

    Since it appears perfectly legal to do so and there is no downside (since the PTO is toothless and, apparently, both legally incapable and also unwilling to enforcing breaches of ethical conduct by those who practice before it), anyone who lets a competitors patent sit for any length of time without filing a request for re-exam (based on actual facts or facts that are fabricated by changing a few dates here and there and misrepresenting the content of the cited art) is doing their client a grave disservice.

  28. I think the real question here is simple – If (a big IF) a petitioner for reexamination (who may or may not be an attorney (see you’re MPEP) files a petition which is intentionally false AND by gaming the system materially damages a patent owner (i.e., their business relationships, financing, litigation, licensing, market share, etc.) then should there some liability for that willful damage? The rational answer has to be yes because if it was no then patent rights become meaningless as we can all simply pump data (true or false) endlessly into the PTO with impunity and leave every patent in limbo for as long as we want.

  29. …other than taking the proper meds and actually bein current in patent law matters, ya mean Kenny?

    Sides which, you was the one asleep at the switch as to, ahem, let me quote me:

    “By contrast here, malicious prosecution should be judged, in part, by the standards expected by the State Bars with which these attorneys are registered.”

    cepts, once again, this ignores the fact that Ex parte can be brought by those not licensed by State bars and anonymously.

    Kenny, wake up.

    Posted by: ping | Nov 11, 2010 at 10:37 AM

    Ya don’t think bein so off the mark is a cause for concern, do ya?

  30. Inviting Body Punches
    That will never happen, because that would result in Paulson, Geithner and all the rest to be subject to criminal prosecution for the statements made about TARP.

  31. ?-boy,

    Ya got it wrong about my reading comprehension there Sunshine.

    Your statements were pretty meaningless “above” as my observation indicated. Your inclusion of unicorns is just plain corny, and frankly, coming on the heals of your bi-polar statement wanting a tort (“Wrong, a Re-exam affects business and licensees or customers view it as a potential liability.“), Iza wasn’t sure if you lived in that land of unicorns.

    Specially as my observation preempts your latest statement of “There is no viable theory of liability for civil damages.

    Attacking me for holding the same premise you espouse dont quite seam sane, does it?

  32. Here, here Conrad. It would be a brave thing if more men had the courage to stand up for their women. I sure wouldn’t mind the help. Its a difficult decision though because it could turn a pleasent afternoon for you into a black eye.

  33. Here, here Conrad. It would be a brave thing if more men had the courage to stand up for their women. I sure wouldn’t mind the help. Its a difficult decision though because it could turn a pleasent afternoon for you into a black eye.

  34. Here, here Conrad. It would be a brave thing if more men had the courage to stand up for their women. I sure wouldn’t mind the help. Its a difficult decision though because it could turn a pleasent afternoon for you into a black eye.

  35. “I ask others, is that the only viable theory of liability?”

    – You already have your answer. Scroll up and read my first post.

    There is no viable theory of liability for civil damages. AS others mentioned, Attorneys can be sanctioned for actions unbecoming an officer of the court but it is VERY, VERY doubtful that a re-exam filing, unless it was completely fabricated, would ever put an attorney on the hook (I do wish the profession was a bit more strict on ethical violations). In fact, I will personally thank anyone (in a post) if they can find ONE (1) instance where an attorney was disciplined for filing a re-exam.

  36. Ping,

    I know you have a problem with reading comprehension but the fact that you made three comments to a tort that exists in the same reality as Unicorns says something about your attention to detail.

    And you work in the USPTO. Does anyone else have concerns that Ping is the guy that is suppose to catch fraud by paying close attention to detail, like reading the content of two full sentences?

  37. The whole regime is flawed.

    Your whole understanding is flawed.

    No matter what the requester “piles on”, it comes down to the examiner doing his job properly.

    It is when that doesn’t happen is when shtt happens. The whole point of re-exam was for the OFFICE to get a second bite at the examination apple. Let me be all scholarly and quote this fantastic observation:

    As duly pointed out, any such sham requests only impact the concerned party if – get this – the Office doesn’t do its job (surprise, surprise – another point of Office F Up that hurts the patent holder).

    Until the examiner professionally examines the request and determines that the proper legal criteria (for example, a substantial new question of patentability has been raised by the request) has been met, there is no impact (other than to the Office, which must do the examin).

    Posted by: ping | Nov 10, 2010 at 04:48 PM

    That findin of substantial new question of patentability is the key, cause that be what needs watchin soazin that we don’t accept poor examination as the norm (like soooo many chowderheads soooo easily do). Do the F_in job right the first time and so much of this becomes a non-issue.

  38. Oh I am sorry, I thought you guys were following these issues more closely. Here is an interesting case on point, I might add with respect to malpractice in patent cases and preemption. link to ipo.org

  39. IBP, very impressive. None of those pesky details, however, are going to matter to Big Pharma, are they? The suit is going to be filed and all the elements will be satisfied one way or another, or at least a good faith (heh) effort will be made to satisfy them that is vastly more reasonable than the sham submission to the FDA.

    I agree that there are distinctions betwen my FDA hypo and the typical patent scenarios such as the re-exam submission that is the subject of the thread. But the biggest distinction is that the PTO is involved and not the FDA. Your proposal regarding 18 USC 1001 is interesting, regardless.

  40. The central problem here is caused by the fact that the patent owner has no say whatsoever prior to a reexam being order. The requestor can pile lie upon lie upon lie, and the patent owner has not only no remedy, but no say in self defense. The i d i o t-s who designed this thing seem to operate under the blind assumption that all infringers would act in good faith and that a reexamination order would not harm the patent owner.

    The whole regime is flawed.

  41. Mooney: “I believe the prospective “contractual relationship” is any prospective business relationship between the plaintiff and any third party…”

    No, it is not. There are several conditions that must be met in order to qualify.

    That connection is too speculative and remote to qualify, unless there is possibly some specific intent evidenced by said third party to enter into a contract with the applicant, which contract will be occasioned solely by the grant of FDA permission–i.e. “when a contract would, with certainty, have been consummated but for the conduct of the tortfeasor”.

    The permission to market should properly be seen as a condition precedent to the possibility of any contractual relations, and not to any specific possible contractual relation, unless the wording of the not-yet-enforceable contract was very specific.

    And in your scenario, there would have to be a time limit of under 2 years for the fulfilment of the condition precedent, or else, if everything was proven, only those damages attributable to the 2-year delay would be available.

    So would that be the theory of liability on which you would hang your hat? Is there anything else?

    What if there was no signed contract waiting for the condition precedent to be fulfilled? Or if, in the patent sense, there was no licensing agreement conditioned solely upon the grant of a patent?

    It’s a matter of proving damages, mostly, and of proximate cause–very fact-specific. Especially difficult in the case of a re-exam, given the spectrum of outcomes regarding property valuation.

    And THAT is AFTER proving that the defendant knew of the relationship, that the acts were intentional, and that they were designed to disrupt the relationship.

    I ask others, is that the only viable theory of liability?

    In Mooney’s hypothetical, I would be inclined, at the same time, to file a criminal complaint under 18 USC 1001. The whole purpose, after all, of 1001, is to “punish those who render positive false statements designed to pervert or undermine functions of governmental departments and agencies” (US v Harrison)”.

    Maybe one could be made whole through an order of restitution. Harm that is statutorily compensible through restitution under 18 USC includes, “…(1) in the case of an offense resulting in damage to or loss or destruction of property of a victim of the offense—(B) if return of the property under subparagraph (A) is impossible, impractical, or inadequate, pay an amount equal to the greater of—(i) the value of the property on the date of the damage, loss, or destruction, or (ii) the value of the property on the date of sentencing, less the value (as of the date the property is returned) of any part of the property that is returned; §§ 3663A(b)(1); 3663(b)(1).

    Sounds good to me. Sick the feds on them, NOBODY wants that. Making false statements is, after all, an offense against the public order, that should be prosecuted by the government on behalf of the people, while preserving the concept of restitution to victims.

  42. IANAE:

    I hope you don’t believe that a state court can be trusted to determine what is and what is not a sham re-examination filing at the PTO. You must be kidding.

  43. I hope you don’t seriously believe this.

    You hope I don’t seriously believe that it’s possible to lose a case without being liable to the opposing party for some variant of vexatious litigation?

    Sometimes I wonder about the things you believe.

  44. IANAE: I’m pretty sure the various state courts and disciplinary boards can tell the difference, because you don’t see attorneys getting sued every time they lose a case.

    I hope you don’t seriously believe this.

    Have you ever been through a trial where a judge made a findings of fact? Seriously. Have you?

  45. IBP In your Big Pharma vs Giant Pharma scenario, under what theory of liability would you claim damages? In my state, the closest theory of liability would probably be “tortious interference with prospective economic advantage”, but even that requires interference with a prospective contractual relation. Specific to the FDA, do you think FDA permission to market a drug serves to create a contractual relationship between the FDA and the applicant?

    I believe the prospective “contractual relationship” is any prospective business relationship between the plaintiff and any third party, e.g., between Giant Pharma and a drugstore and/or hospitals and/or manufacturers etc.

  46. NWPA: So, if you file a re-examination and lose, then that means that you can then be sued in a state action?

    You can’t tell the difference between a case you ultimately lose and a case that was filed fraudulently, vexatiously, or without merit?

    I’m pretty sure the various state courts and disciplinary boards can tell the difference, because you don’t see attorneys getting sued every time they lose a case.

    By which I mean, if you find that you, personally, are getting sued every time you lose a case, you should take a close look at why that is.

  47. No end to the chuckles for sure.

    Ping, I think the problem is probably not directly related to Tafas.

  48. No end to the chuckles when certain bloggers simply shut their minds down and fail to see substance, if that substance comes at em in any type of nonconventional manner.

    The minds of some are so easily lulled.

  49. NWPA,

    That is a weakness and the PTO probably needs to tighten up.

    Ya think the Office might have trouble ala Tafas, or does this more likely be one of those more evident “practice before the Office” thingies? Sounds a lot like the latter.

    IBP,

    Well said.

    Kenny,

    As usual, ya be off in la-la land when it comes to substance verus who be tellin ya the substance. Ya really need to work on that proclivity.

    As for the State v Fed battle, it be moot, now wouldn’t it if ya paid attention at all.

    As for “Wow, I am sure glad I live in the U.S. where we don’t face any of these degradations like the Germans did in the 1930s when their industrialists sought ways to make up for the eonomic losses of losing a war.

    You really have your eyes closed if you think this isn’t happening now (and hasn’t been happening since the New Deal).

  50. Kenneth there is no doubt that we are in a terrible downward spiral of becoming a third world country.

    Suing people for filing re-examinations, though, isn’t exactly where I would take my stand.

    Particularly, since in teh state I practice, I can tell you the judges are —well— they don’t appear to be honest and appear to take money.

  51. Ping:
    I seriously doubt that you have a vested interest in this or that you have any experience in this area. These ethical issues are actually discussed frequently at national meetings by those who are responsible for administering the disciplinary arms of the State Bars. It is completely fathomable that this case is being used to justify yet another redundant government program of a disciplinary arm of the USPTO thereby justifying annual fee payments and increases so as to shore up the fiscal malfeasance of our great legislative body, the Congress.
    With that said, I really think that Congress has no authority to control the States administrative functions of it attorneys. In short, while the attorneys acts might be pre-empted by Federal Law adjudication of the motivation behind those acts as regulated by state law should not. We see these issues come over and over again. Ruby Ridge whereby the Lon Horiguichi was being tried for murder by the state saw that case removed to Federal Court on Pre-emption grounds. I totally agreed with that, because pre-emption does not mean that the Federal Government can make it legal for a law enforcement officer to murder a state citizen and not be held accountable for murder under state law. That is exactly how the SS was able to wrestle local control of the police forces in Germany from whence the Gestapo was created. First the police officers were paid by the National German Government. Then, they were given immunity when acting at the behest thereof from local prosecution for local crimes if the National Government authorized those local crimes.
    This pre-emption situation is bandied about without much thought as to the consequences. I didn’t agree with it at Ruby Ridge and I certainly do not agree with it here; because, these attorneys are officers of the Court and regulated by the Supreme Court of their respective states. If we allow the Federal Government to usurp the states control over its judicial proceedings, boy we are not far off from having problems not unlike the Germans faced in 1930s Germany. I mean first you will see insular groups being harassed, for instance you would even be able to give money to their philanthropic institutions. Next you will see you won’t even be able to exercise your fundamental right to travel throught this great nation without having to show your papers and worse, perhaps the most exhaustive search of your person. Then the law enforcement officers will be abe to detain your person, or worse, execute you on the street with virtual impunity. Who knows your right to counsel and trial without being unduly detained might be vitiatned and the national government might even sequester your person without judicial oversight and you might be subject to torture. Then they might even decide that your money is required and confiscate all that you have of any value forcing you into bankruptcy. Then once we have all these people living on the streets it might be necessary to round them up and put them in retraining centers so that they may get use to the “New Normal” and learn skills valuable to this “New Economy”. You know places where they can be “Re-Educated” and/or Concentrate on how they can become integrated valuable citizens in the”New World Order”.
    Wow, I am sure glad I live in the U.S. where we don’t face any of these degradations like the Germans did in the 1930s when their industrialists sought ways to make up for the eonomic losses of losing a war.

  52. I suspect that a re-exam proceeding wouldn’t even properly qualify as a “civil proceeding against the plaintiff”.

    A re-exam proceeding is not taken “against” any party, but is instead an administrative proceeding directed at the administrative agency PTO, requesting the PTO to perform an administrative function.

    The valuation of a patent as personalty can emerge therefrom decreased, unchanged, or increased.

    It is an administrative proceeding, not taken “against” anybody in particular.

    Furthermore, the proceedings do not “terminate in favor of the plaintiff”, especially ex parte. The re-exam function is not adjudicative of a dispute, even inter-partes. The plaintiff does not ask for a particular remedy, the PTO does not fashion a particular remedy, there is no weighing of balance of equities. The proceedings are administrative, without any consideration of the interests of a particular entity involved in the re-exam.

    Malcolm–

    In your Big Pharma vs Giant Pharma scenario, under what theory of liability would you claim damages? In my state, the closest theory of liability would probably be “tortious interference with prospective economic advantage”, but even that requires interference with a prospective contractual relation. Specific to the FDA, do you think FDA permission to market a drug serves to create a contractual relationship between the FDA and the applicant?

  53. discipline at the PTO would actually be very effective at stopping sham actions.

    NWPA – see my observation re: Kenny.

  54. IANAE: find success on the merits in the action to be pretty convincing evidence

    Well, let’s try to use our brains here and not our knees. So, if you file a re-examination and lose, then that means that you can then be sued in a state action? I think that would put a chill on re-examination filings.

    I can just imagine a conversation with a client. Yes, we can file a re-examination, but you have to realize that they could come back and sue you in state court claiming it was a sham re-examination filing. The clients would be far less likely to file re-examinations.

    Also, state courts are notorously corrupt. Many clients would not want to risk ending up before a local state judge.

  55. They all seem to derive from conduct found wanting by the attorney’s state bar.

    Not all, but the common thread I see in many of the suspensions is mismanagement of client funds. That would lead to problems with both the state bar and USPTO.

  56. Well, EG, the difference is that central to the claims is whether or not an action at an administrative agency is a sham or not.

    How much patent law do you really need to know, when the question before you is whether a party has made a fraudulent misrepresentation about the contents or date of a document?

    One can easily imagine how a state could control federal agencies by determining what is and what is not a sham action.

    They wouldn’t be telling the federal agency how to decide the action, would they? If anything, I’m sure the state would find success on the merits in the action to be pretty convincing evidence.

  57. Well, EG, the difference is that central to the claims is whether or not an action at an administrative agency is a sham or not.

    One can easily imagine how a state could control federal agencies by determining what is and what is not a sham action.

    And, discipline at the PTO would actually be very effective at stopping sham actions.

  58. In my opinion, the “preemption” basis for kicking out the state law claims won’t wash. What remedy, pray tell, can Lockwood get from the PTO for a sham reexam proceeding? The PTO might discipline the attorneys involved from Sheppard Mullins, but that really doesn’t help Lockwood. The PTO certainly can’t award damages to Lockwood or even grant an injunction against further sham reexams.

    What Lockwood asserts is simply state claims for malicious prosecution, tortious interference and fraud. There’s nothing here that requires exclusive jurisdiction under 1338. That Lockwood’s claims require an understanding “patent law” or PTO reexam procedures doesn’t automatically make it a 1338 jurisdiction case. Otherwise all licenses involving patents would be automatic 1338 cases which they aren’t.

  59. By contrast here, malicious prosecution should be judged, in part, by the standards expected by the State Bars with which these attorneys are registered.

    cepts, once again, this ignores the fact that Ex parte can be brought by those not licensed by State bars and anonymously.

    Kenny, wake up.

  60. The problem with the pre-emption argument is that both President Nixon and Clinton were disciplined by their respective State Bars for actions taken while President. By contrast here, malicious prosecution should be judged, in part, by the standards expected by the State Bars with which these attorneys are registered. I mean if President’s can be disciplined by their State Bars for official acts, why cannot a patent practitioner. Therefore, there seems to be concurrent responsibility for their acts. Insofar as the act of filing the Re-examinations violates a duty they have sword to uphold as a member of a state bar, these attorney should be subject to state law causes of action for the same. It is just my opinion.

  61. Is there such a thing as a non-deceptive misrepresentation?

    Sure there is. A misrepresentation is non-deceptive if it’s so ridiculous that it would never fool anybody. For example, “Sarah Palin has foreign policy experience because Alaska is close to Russia”.

    Okay, maybe they don’t exist in America. You win this round.

  62. Lockwood complains of “deceptive misrepresentations”.

    Would they not have complained if it had been a deceptive representation?
    Or if it had been a non-deceptive misrepresentation?
    Is there such a thing as a non-deceptive misrepresentation?

  63. Telling is the fact that the plaintiff (The TPL Group) apparently didn’t receive any action against the Sheppard Mullin lawyers by the California State Bar.

    Here is what TPL’s Motion in the Federal Circuit says about the TPL Group:

    “The TPL Group is a purpose-built boutique that specializes in the development, commercialization, and management of intellectual property assets as well as the leveraging of those assets to drive advanced product development. As a patent holder, it is intimately familiar with the reexamination process, having gone through the process itself several times.”

  64. ——–
    If they are not patent attorneys, what could the PTO actually do if the requestor committed fraud in the filing? What is the remedy?
    ————————————————-

    See the tort I mentioned in my above post. But thanks for catching the issue Ned, it’s good to have someone around to state it clearly.

  65. I haven’t read the case, but assuming these attorneys are patent attorneys, why didn’t the plaintiff immediately file a complaint with the PTO?

    If they are not patent attorneys, what could the PTO actually do if the requestor committed fraud in the filing? What is the remedy?

  66. —You are assuming that the filing of a reexam request, sham or otherwise, causes harm rising to the level of tortiously interfering with one’s business. Unless and until the request is granted and a reexam proceeding actually begins, there is no harm nor any interference with one’s business. The patent owner doesn’t have to do anything until then.–

    -Wrong, a Re-exam affects business and licensees or customers view it as a potential liability. You would have to find some tort law to cover this and it would likely rely heavily on the intent to injure a business without any other business intention. Honestly, I think this tort exists in the land of Unicorns and the US middle class.

  67. sockie the sockpuppet I know you find it hard to believe that practitioners other than yourself are actually following the rules, but they do.

    I’m proud of you, sockie.

    Every case of inequitable conduct discussed on this site has had you conducting your own little version of the Salem witch trials.

    LOL. Sounds scary, sockie!

    In the meantime, try to get those pesky dates right, mkay?

  68. Kinda reminds of the Neflix appeal that Lemley is handling where Netflix is asking for attorneys fees but where it also appears that Neflix may have committed sanctionable fraud on the PTO by giving a the applicant a 132 affidavit for filing in the PTO which was filled with demonstrable lies about alleged Netflix prior use.

    The gaul of the pot calling the kettle black.

    But it does raise issue whether the Feds should impose on such sharks as Netflix appears to be some sort sanction for deliberate and wilfull fraud in seeking to “invalidate” a patent before the PTO.

  69. “One aspect of the law that is unclear to me is how this case differs from the ordinary prosecution malpractice situation.”

    In the current case, the plaintiff is alleging damages owing to breach of a duty to the PTO. In the typical malpractice situation, isn’t the plaintiff claiming a breach of the duty of due care to the client?

  70. what’s up.

    That’s just plain the worst thing Iza read today.

    Not even the examiner get’s away with prima facia alone during the initial examination. Your suggestion would mean that examination was less than meaningless.

  71. “Yes.”

    I can’t recall any. Every case of inequitable conduct discussed on this site has had you conducting your own little version of the Salem witch trials.

    You’re just such a bore.

  72. The standard for reexam requests should be changed from “substantial new question of patentability” to “prima facie.” That is, the requestor should make a prima facie showing that at least one claim is invalid over the prior art.

    An Examiner should be able to determine fairly quickly if the requestor has provided enough factual evidence to meet this standard.

  73. “Question: when you file a request for re-exam, do you double-check the critical dates and the content for accuracy or do you just tell the newbie patent agent to ‘make it happen’?”

    What?

    If I file a request for re-exam, I follow the rules. I know you find it hard to believe that practitioners other than yourself are actually following the rules, but they do.

    I have no idea what straw man you’re setting up with the “newbie patent agent” remark. Try to focus.

  74. sockie the sockpuppet

    A regular bowl of chuckles ya are, there Sunshine. Comin from the most plenacious user of puppets and all.

  75. do ya think it’s fine that the Office just doesn’t do it’s job.

    pingaling, wut ya tink I be railin ginst the sawfffftware ‘zaminers fur all dis time?

  76. As duly pointed out, any such sham requests only impact the concerned party if – get this – the Office doesn’t do its job (surprise, surprise – another point of Office F Up that hurts the patent holder).

    Until the examiner professionally examines the request and determines that the proper legal criteria (for example, a substantial new question of patentability has been raised by the request) has been met, there is no impact (other than to the Office, which must do the examin).

    Sunshine Malcolm, ya gonna back up you answer that it’s “reasonable to assume that the PTO grants the re-exam without detecting the sham aspect(s) of the request“, or do ya think it’s fine that the Office just doesn’t do it’s job. Feel free to reply with any of your usual handwaivy things if ya have no “integrity.” Also feel free to continue be otching without substance.

    IBP,

    One problem with your tort elements is that any action reaching theparty has to – by law – been sanctioned by the Office. This kinda ki_lls element 3.

  77. I suppose if bogus re-examination requests are going to be treated as fraud, then bogus or invalid patents which have been used to extort royalties from others or which have been used to exclude competitors, should also be prosecuted as fraud and racketeering. Case in point the software patent lawsuits against RIM’s Blackberry phones. RIM knew the patents cites were invalid because of prior art, but had to pay up anyway because they had an injunction against selling their phone, which would put them out of business if they didn’t. After having paid up, the patents concerned were found to be invalid by the USPTO.

  78. sockie the sockpuppet: Has there ever been an allegation of inequitable conduct discussed on this site that Malcolm wasn’t 100% convinced was true?

    Yes.

    Question: when you file a request for re-exam, do you double-check the critical dates and the content for accuracy or do you just tell the newbie patent agent to “make it happen”?

  79. Has there ever been an allegation of inequitable conduct discussed on this site that Malcolm wasn’t 100% convinced was true?

  80. Mark, none of those suspensions (as far as I can tell) relate to inequitable conduct before the USPTO. They all seem to derive from conduct found wanting by the attorney’s state bar.

  81. Sorry–it should read “never representing to the client that he IS licensed to practice general law in Texas”

  82. Come again–

    There is no contractual relationship between a party and opposing counsel.

    Also, “malicious prosecution” relates to criminal matters. The civil equivalent is “wrongful use of a civil proceeding”.

    The elements of the tort are:

    1. The defendant initiated, continued, or procured civil proceedings against the plaintiff;
    2. The proceedings terminated in favor of the plaintiff;
    3. The defendant acted without probable cause;
    4. The defendant’s primary purpose in initiating, continuing, or procuring the civil proceedings was other than securing a proper adjudication of the claim (i.e., “malice”); and
    5. The plaintiff sustained injury or damage because of the proceedings.

    Note requirement 2: termination in favor of the plaintiff. If reexam proceedings are not yet completed, the allegation may have been made too early. And even so, in the context of re-exam, what exactly does “in favor of the plaintiff” mean?

    I think the answers depend on the relationship between the parties, and that malpractice claims should be dealt with at the state level.

    For instance, let’s say a USPTO-registered patent attorney, licensed in California, practices patent prosecution in Texas–all the while, never representing to the client that he is not licensed to practice general law in Texas. One sees this all the time in patent prosecution–”John Doe, Registered Patent Attorney (not licensed in Texas)”

    Should a malpractice claim arising from an engagement to prosecute a patent at the USPTO invoke federal s-m jurisdiction? I don’t think so. Again, the federal question is not substantial, but instead incidental to the substantial questions of whether or not the defendant attorney breached any duty owed to the client based on the engagement agreement, or is otherwise liable for the client’s injuries as a result of negligence.

  83. As I noted in another thread, the reason the PTO does not prosecute patent attorneys held to have committed inequitable conduct is that there is a five-year statue limitations dating from the date of commission of the act that the PTO believes governs its disciplinary prosecutions.

    This what stated during most recent AIPLA annual meeting by a former PTO solicitor.

  84. I have a simple question, does Rule 1.56 apply to a reexamination requestor? By its very terms, Rule 1.56 applies (only?) to those who file and prosecuted patent applications. Is a requestor one of these?

  85. You are assuming that the filing of a reexam request, sham or otherwise, causes harm rising to the level of tortiously interfering with one’s business.

    Yes, I am. I think it’s a reasonable assumption. I think it’s also reasonable to assume that the PTO grants the re-exam without detecting the sham aspect(s) of the request.

  86. There’s a larger problem of litigation being so expensive for clients… much less of it gets done than should and a party can do things like force a re-exam to penalize the other party too much. If we’re talking about England, maybe we should also talk about a simple fix: make the losing party pay the other party’s legal fees. It’s a remedy not currently available with patent re-exams.

  87. Malcolm: Would it be incorrect to say that, based on this case, if someone wants to by filing a sham re-exam request (e.g., misrepresenting critical dates and the nature of the disclosure) with the PTO, that you just have to lie down and take it?

    You are assuming that the filing of a reexam request, sham or otherwise, causes harm rising to the level of tortiously interfering with one’s business. Unless and until the request is granted and a reexam proceeding actually begins, there is no harm nor any interference with one’s business. The patent owner doesn’t have to do anything until then.

  88. For comparison’s sake, let’s say that Big Pharma was coming out with a new drug. Just before the drug is released, Giant Pharma files a report with the FDA claiming that the drug is dangerous and, to support the claim, includes 100 pages of completely fabricated data. The FDA prevents Big Pharma from marketing the drug for two years while it sorts the mess out.

    Anyone here believe that Giant Pharma would be able to walk away from that mess?

  89. Would it be incorrect to say that, based on this case, if someone wants to tortiously interfere with your business by filing a sham re-exam request (e.g., misrepresenting critical dates and the nature of the disclosure) with the PTO, that you just have to lie down and take it? Because you know that the PTO is never going to punish the re-exam requester.

  90. Regarding Scott’s comment: A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984.

    Reexaminations are supposed to based solely on prior patents and printed publications. The alleged prior use dating back to 1984 should never be accepted as a basis of granting a request for reexamination. That would be a matter solely for the courts. Only the 1986 date of the published manual is relevant to the request. Since the cited publication is not prior art (assuming the Lockwood’s priority date is accepted), the reexamination request should be denied.

  91. Given the PTO’s inability or reluctance to discipline rogue applicants and/or re-exam requesters, the situation does present an interesting dilemna.

    The earlier decision from the California Court of Appeal is a good read:

    link to caselaw.findlaw.com

    To determine whether the USPTO would have granted the reexamination request in the absence of Sheppard Mullin’s alleged misrepresentations, the court would have to determine whether the prior art references, properly characterized, meet the standard for reexamination under the patent laws.   In other words, the court would have to determine whether the prior art raises “a substantial new question of patentability.”  (35 U.S.C. § 303(a).)   That determination must be made in accordance with USPTO procedures, which provide that prior art raises a substantial new question of patentability where “ ‘there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable.’  [Citation.]”  (Procter & Gamble Co. v. Kraft Foods Global, Inc. (Fed.Cir.2008) 549 F.3d 842, 848, quoting Manual of Patent Examination and Procedure (8th ed. [Rev. 7] 2008), § 2642.)   Obviously, therefore, the court would be presented with substantial questions of patent law, effectively having to put itself in the position of a “reasonable” patent examiner and determine whether the prior art would be considered important in deciding the patentability of Lockwood’s patent claims.

     At first blush, it might be said that the USPTO has already made this determination, since it ultimately found (at the conclusion of the reexamination proceedings) that the prior art failed to disclose, teach, or suggest the invention described by Lockwood’s patents.   But the USPTO’s determination, made at the conclusion of a three or four year reexamination process, is not particularly instructive as to whether the request for reexamination would have been granted in the first place absent Sheppard Mullin’s alleged misrepresentations.   This is because the Manual of Patent Examination and Procedure instructs, “ ‘ “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either anticipated by, or obvious in view of, the prior art patents or printed publications.’  [Citation.]”  (Procter & Gamble Co. v. Kraft Foods Global, Inc., supra, 549 F.3d at p. 848, quoting Manual of Patent Examination and Procedure, supra, § 2642.)   Thus, the USPTO’s decision confirming Lockwood’s patents does not obviate the substantial questions of federal patent law involved in determining whether the prior art would be considered important in deciding the patentability of Lockwood’s patent claims.

    In sum, we hold that Lockwood’s complaint, which seeks to regulate the conduct of attorneys appearing before the USPTO and requires resolution of substantial issues of patent law, is subject to the exclusive jurisdiction of the federal courts.   In making this determination, we express no opinion regarding the merits of Lockwood’s claims or Sheppard Mullin’s defenses.

  92. The PTO examiner has the cited prior art itself to look at. He/she doesn’t have to take the requester’s word and accept the assertions made in the request without studying the matter. The PTO doesn’t hire unintelligent people with no skills or credentials. The law presumes that the examiner is competent to make an independent evaluation, just as he/she would in application prosecution. Outright lies and misrepresentations about the nature of the prior art should be readily spotted if the examiner is doing his job, even without adversarial proceedings.

    As for the supposed “really good sham”, this is in practice indistingishable from good faith arguments of unpatentability on the part of the requester with which the patent owner strongly disagrees.

  93. The difference is that -

    - in malpractice, the duty (remember your first year torts, duty is one of the four necessary elements for negligence!) runs between the attorney and client. Only the client has standing to sue.

    - here, the injured party is the adversary of the accused lawyer. Whatever remedy Lockwood has, it sure ain’t a malpractice claim.

    - the FDA holds the alleged-fraudster’s application hostage, and the PTO holds Lockwood’s patent hostage. But a reexam requester has no skin in the game at the PTO. Whatever remedy Lockwood has, it’s nothing the PTO can grant.

    Since the laws don’t have any overlap, where would the preemption argument arise?

    Was a claim of Professional Real Estate investors sham litigation raised?

  94. The real issue seems to be that the Lockwood patent arguably benefited from a 1984 priority date (based on a parent CIP). A product manual submitted had a 1986 date, but was alleged to correspond to a system that was in operation in 1984. The Requester provided no explanation of the right to priority of each claim (in order to apply the manual as intervening art), nor how the public use of a system could be considered in reexamination.

    Interestingly, the reexamination (one of two) was delayed more by Lockwood trying to add a method claim than anything else. The method claim was deemed broadening since the issued patent had none. Lockwood also added 22 new claims.

    The request that was filed would never be accepted today, it lumps rejections together, fails to identify key dates, claim interpretation, etc…but things were different prior to the creation of the central reexamination unit in 2005.

    See 90/006,623 for more information, particularly the response filed 7/20/05 and the original request. Interesting case.

  95. If the request is really a sham, an examiner should be able recognize this and simply deny the request.

    Not if the request is a really good sham. For example, if the requesting party “chose to violate the strict duty of candor required before the USPTO by making deceptive misrepresentations about the nature of purported ‘prior art’ in two Requests for Reexamination”, and nobody is around to correct the misrepresentations because the proceeding hasn’t gotten adversarial yet.

  96. A mere request for reexamination is not a reexamination proceeding. Until the request is actually granted, the patent owner doesn’t have to do anything, file any response or statement in answer. It is strictly between the requester and the PTO. There is no harm to the patent owner in this situation, until the request is granted, in which case the examiner has studied the cited prior art and determined that there is indeed a substantially new issue of patentability. If the request is really a sham, an examiner should be able recognize this and simply deny the request.

  97. To simplify that last post… There is a federal policy in favor of third party reexamination requests, but there is no federal policy favoring lawyers who deliver deficient legal services to their clients. That’s why the two situations have nothing to do with each other.

  98. >If the USPTO administrative and disciplinary structure preempts a civil
    >action for patent attorney bad-behavior in reexamination filings, it seems
    > that it would also preempt a civil against by a former client against an
    > attorney broke USPTO ethical rules and injured his client. What is the
    > difference?

    Are you kidding? The rules limiting malicious prosecution suits by third parties are based on the idea that, if such state law suits were allowed, it would “chill” the ability of parties to invoke legal processes established by federal law. That certainly would happen here; people would be a lot less prone to bring reexaminations if they could be subject to collateral suits by patent owners for malicious prosecution. It’s an easy case of preemption, pure and simple, and it’s based entirely on public policy and federal supremacy.

    And that has absolutely nothing to do with a suit by a client against a former counsel, which is based on the existence of a private fiduciary duty and contractual relationship. That’s why clients can sue patent prosecutors, federal tax attorneys, federal securities litigators, etc., without any preemption, because the suit is based on the provision of legal services to the client — not the invocation of a federally-protected process.

    In short, the absence of a fiduciary or contractual relationship between a patent challenger and the patent owner makes the two situations entirely different.

  99. Here, there is no contractual relationship

    …so, there is no contract between the client and his attorney…?

  100. That “substantial question of federal patent law” is thorny.

    In this case, I don’t think that the federal patent law question is “substantial”, when the cause of action is considered.

    What IS substantial is the state of mind of the defendant–the federal patent law question is only secondary to that determination, and although “substantive”, not substantial.

    Dennis–doesn’t malpractice arise from breach of a duty of the attorney to the client? Such a duty is imposed at both state and federal levels. Prosecution-related misconduct, where there is privity of contract between the plaintiff client and the defendant attorney, relates to actions or inactions by the attorney that are in breach of his federally-created duty. I think they should be federal.

    I think the central question relates to the main purpose of the engagement, or more broadly, to the relationship between the attorney and client. Here, there is no contractual relationship. I think it’s really dependent on the specifics of the state cause of action.

  101. There’s no link to the Dist. Ct. case. Can someone inform as to whether the re-exam requesters did, in fact, file a bogus request in some feeble attempt to game the system?

    If it seems likely that is the case, Lockwood’s strategy was a good one. Lockwood could also turn to the California bar, it seems, if he/she wished to turn up the heat.

  102. I read on one of the reexam blogs that 90+% of ex parte reexam requests are granted. Probably because the PTO likes the fees (although I’m sure they’ll claim the fees don’t cover the alleged costs to reexam) and they have the CRU, and those folks gotta have somethin’ to do all day. I don’t think you need to make deceptive misrepresentations to get a reexam order.

  103. What about

    Air Measurement Tech v. Akin Gump Strauss Hauer & Feld, 504 F. 3d 1262 (Fed. Cir. 2007) (recognizing jurisdiction of Federal Courts to resolve state law malpractice claims arising from alleged errors in patent prosecution, counseling, and litigation)? See link to patentdocs.org for further analysis.

    Seems like third party state law claims for malicious prosecution and abuse of process could fit the same analysis followed in Air Measurement.

  104. As Professor Hricik writes, “since 1992, the Patent Office has not investigated inequitable conduct

    When is the last time someone had their license to practice before the PTO suspended for inequitable coduct? When is the last time someone was slapped on the wrist for that matter?

  105. Doesn’t the California malicious prosecution provision statutorily define a state-level tort?

    And isn’t it the ACTS OF THE DEFENDANT that cause injury? I don’t think it should matter what machinery the firm uses or invokes to inflict the injury, be it the federal patent paradigm or some state law paradigm–it is the defendant’s ACTS that matter.

    The elements of the tort are probably specifically related to such acts, and to specifically the state of mind of the defendant.

    The “remedies” in the patent paradigm are not directed at making the plaintiff whole, as are the state remedies. The federal patent law and the state malicious prosecution law have two entirely different purposes.

    There is no pre-emption.

  106. “Jay Thomas (Georgetown) testified on behalf of Lockwood (stating that the PTO is ‘an agency in crisis’ whose examiners are ‘overworked, overextended, undertrained, and underpaid’”

    Lulz. At least he got one of them right. They are undertrained.

  107. What is the difference?

    since 1992, the Patent Office has not investigated inequitable conduct

    Is the difference Justice?

Comments are closed.