California Malicious Prosecution Charges Based on PTO Interference

Plumley v. Mockett, 79 Cal. Rptr. 3d 822 (California Ct. App. 2008) 79 Cal.Rptr.3d 822

Interesting case from California state court. Plumley won an interference proceeding and then sued Mockett and Mockett’s attorney for “malicious prosecution.” The allegation was that Mocket and his patent attorney “filed the federal interference action with malice and without probable cause. In the malicious prosecution charges were dismissed, but case raises important cautions to third parties intending to request interference proceedings; request reexamination; or potentially even oppose European patent grants. In this case, both parties were located in California, and the court there did not appear concerned that the interference (the alleged malicious prosecution) was filed in a non-Californian administrative agency.


  • The facts from the case are intriguing and detailed. Mockett originally sued Plumley in California court alleging that Plumley had stolen his idea. The California court, however, held that Mockett was lying and had fabricated evidence. Parallel to the original state court action, the PTO found for Mockett in the interference (noting that it was not bound by the California court’s holding). On appeal, the district court flipped BPAI’s holding – finding no evidence of derivation. Subsequently, the BPAI awarded the patent to Plumley. At that point, Plumley sued Mocket for malicious prosecution.

The patent at issue is a design patent covering a grommet for a desk that allows wires to pass through. U.S. Design Patent No. D 361711.

18 thoughts on “California Malicious Prosecution Charges Based on PTO Interference

  1. 18

    Doesn’t Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993), raise the bar so high in this kind of suit—on first amendment grounds—that regardless of the California litigation privilege such suits should be dismissed summarily in California or wherever else they are filed?

  2. 17

    Of course, anyone who patents anything must be a “Greed Grubber.” The words grumpy freak come to mind – again.

  3. 16

    An error – it was a utility patent and not a design patent. My partner is handling the fourth request for reexamination filed by the loser. I am an expert witness in the followup patent infringement suit.

  4. 15

    Tazistan – In California, where these parties were located, there is a statutory litigation privilege, Cal. Civ. Code 47(b), that bars claims arising from statements made by complainants in judicial proceedings. So, even if there is libel, the patent owner has no CA state claim. Cf. Silberg v. Anderson, 50 Cal.3d 205 (1990).

  5. 13

    6000, thanks for the clarification. But if life has taught me anything, it’s that anything is possible. Yet try as I might, I just can’t think of a scenario wherein vexatious reexamination requests might create a cause of action…

  6. 12

    “If party A requests a reexamination of Party B’s patent, can anyone think of a scenario where party B could make a claim against party A?”

    I was thinking only of the scenario where party A is infringing Party B’s patent.

  7. 11

    Steve M., I wondered the same thing — how could the value of this invention possibly justify more than 15 years of litigation? I have no personal knowledge of this, but when I see such protracted litigation, I suspect it is an intensely personal, emotional battle that could never be warranted by the financial considerations alone.

  8. 10

    How unfortunate that so much of everyone’s time, effort, and money was spent on an “invention” of so little, if any, value.

    You’d have thought they were fighting over the laser…or the intermittent windshield wiper.

  9. 9

    Kevin R. That is a good question. One which I was pondering. I personally cannot think of a situation.

  10. 8

    patent leather/6000 –

    In my comment above I was not assuming that there was any litigation or anything else other than just a bare reexamination request. 6000, if you can think of a situation where making reexamination requests creates an legal cause of action, would you mind enlightening an interested law student?

  11. 7

    The sad thing is that there are probably hundreds if not thousands of people alive who independently “designed” their own grommets but who are not as tuned into the greed grubbing game as the above-mentioned entities.

  12. 6

    The current uses of design patent law make me puke. “Ornamental” should be rigidly enforced.

  13. 5

    I could.

    Also, I love those little grommets. I had some in the classrooms I used to go to. Mainly, the top piece is good for playing with while bored.

  14. 4

    The SLAPP and malicious prosecution issues are interesting, but what I find amazing is how long and intense this battle has been.

    The interference was requested in July 1993. The losing party filed a Section 146 appeal of the Board’s decision in 1998. There were two CAFC appeals, the latter of which the court decided in October 2005.

    The state court tort action was filed in December 1993. There was a jury trial, declaration of mistrial, appeal, petition to the California Supreme Court and — you guessed it — a cert. petition to the U.S. Supreme Court. Surprisingly, there was apparently no petition to the International Court of Justice.

    All the foregoing was merely the underlying litigation at issue in the 2006 malicious prosecution action! Given the history of this thing, I would expect petitions to the Cal. and U.S. Supreme Courts. That’d probably keep this going until 2011 — 18 years after it started.

    My goodness.

  15. 3

    patent leather –

    I do not think that a reexamination request can ever result in a cause of action against the requester. Reexamination requests can be made ex parte and they are administrative actions. Policy supports reexamination of patents, even if they are “strong” patents.

    Without something more sinister, I do not believe that reexamination requests can create a claim that would survive a 12(b)(6) motion. Even if someone was making repeated requests with the same prior art after a previous finding of no SNQ, I think the remedy, if any, would be sanctions to the requester rather than creating some sort of remedy for the patent owner.

  16. 2

    If party A requests a reexamination of Party B’s patent, can anyone think of a scenario where party B could make a claim against party A?

  17. 1

    The citation is incorrect. The correct citation is:
    164 Cal.App.4th 1031, 79 Cal.Rptr.3d 822, 08 Cal. Daily Op. Serv. 9001, 2008 Daily Journal D.A.R. 10,796.

    I had a similar case in Washington.

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