Patently-O Bits and Bytes No. 93

Upcoming Events

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions “are for advocacy purposes” and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

  • I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant’s motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential “estoppel will resolve many of the invalidity issues and streamline the litigation.” In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the “Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants’ choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner.”

Late Patents:

7 thoughts on “Patently-O Bits and Bytes No. 93

  1. 7

    Actually, it makes a lot of sense to stay a litigation pending a re-examination [even an ex parte one] and, in my experience, courts almost uniformly do it (except, notably in EDTex). The main reason is, in my view, that there is about an 80% chance that the patent will either not survive re-examination or will change in some substantial way. For the court and the parties, staying the litigation makes a lot of sense, especially if the case is still pre-Markman since otherwise, you may end up taking a lot of time and effort to construe a patent which may end up being quite different.

  2. 6

    The only valid patent post-KSR is a patent with at least one element not found in ANY other prior art reference, anywhere in the world.

  3. 5

    Years ago, after over a year of offering a license, I sued a dirty farkin’ infringer who refused my reasonable license offer. Right before discovery/deposition were about to escalate litigation costs, I filed for Re-examination and Motioned for a stay pending Re-exam. While the Judge was mulling my Motion over, the infringer offered to settle, and that’s what we did.

    Maybe the Judge in the case to which you refer was tactfully advancing the notion of settlement?

  4. 4

    “The court GRANTED the injunction then stayed the case pending re-exam.”

    OUCH! That can’t be right, can it? I guess the “substantial question of patentability” that the PTO necessarily found didn’t weigh too heavily in the judge’s analysis of “likelihood of success on the merits”…

  5. 3

    About stays pending re-exam, defendants in Automated Merchandising v. Crane (ND/WV 08-cv-97) got burned when they sought such a stay after plaintiff filed for a preliminary injunction. The court GRANTED the injunction then stayed the case pending re-exam. Its now on appeal. You can read my post about it and get a copy of the opinion at link to

  6. 2

    “especially inter partes reexaminations which tend to be incredibly slow.”

    PTO needs to make a concerted effort to speed them up.

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