Stay Pending Reissue: Timing and Blog Reliability

Tyco Fire Products LP v. Victaulic Co., 10-cv-4645 (E.D. Pa. October 4, 2011)

by Dennis Crouch

In September 2010, Tyco Fire filed suit against Victaulic alleging infringement of two fire sprinkler system patents. U.S. Patent Nos. 7,793,736 and 7,819,201. Almost one-year into the lawsuit, Tyco Fire filed a pair of reissue application with the PTO – admitting that that both patents have defects that need correcting. The reissue applications request that the PTO narrow the subject matter being claimed with the apparent hope of avoiding an adverse invalidity decision in court.

Patentlyo087_small[1] After filing the reissue applications, the patentee requested that the district court stay the litigation pending the outcome of the reissue. In response, Victaulic cited my post from January 2011 identifying the average five-year pendency for reissued patents. In a brief filed under seal, Tyco's attorneys from Morgan Lewis called my post "unreliable" and "unsubstantiated" because it was found in a blog.

In deciding the issue, the judge correctly found that the reissue will certainly take some time even if my post regarding the average delay does not exactly predict the path for Tyco's applications. A potential important difference is that my data reflects the average for all reissue prosecutions but does not separate-out cases going through expedited reissue. See MPEP § 1442.

In the end, the judge refused to stay the litigation based upon the potential delay and the fact that the reissue does not appear to be likely to narrow the issues in the litigation. In addition, the court found that the reissue was motivated by claim construction questions posed by the defendant in the litigation. This timing issue (first seeing the claim construction arguments, then filing for reissue) raised "alarm bells" with the judge who identified the move as a potential "litigation gambit" intended to give the plaintiff a tactical advantage.

Stay denied.

Note: I contacted the Morgan Lewis attorneys who submitted the brief for a comment on what was particularly unreliable or unsubstantiated regarding my post. They have not responded.

31 thoughts on “Stay Pending Reissue: Timing and Blog Reliability

  1. 29

    “MM Malcolm Mooney School of Critical Legal Thinking”

    You are obviously referring to MM Malcolm Mooney School of Critical Legal ThinkingClown College

  2. 28

    This is probably true. The most frequent commenters come across like people who get drunk, fire up the internet, and use Patently-O comments as a substitute for human interaction.

    That said, the January 2011 post at issue here actually generated some good comments and very little of the usual nonsense, so maybe that had nothing to do with this.

  3. 25

    Personally I prefer to argue a case without looking like a clown.

    Not a graduate of the MM Malcolm Mooney School of Critical Legal Thinking.

  4. 24

    Of course they should question everything but they could have approached it differently, for instance argued that thir case was part of a statistical outlier with respect to the art unit and that an averaging effect obscured this.

    Casting doubt over the findings because it was posted in a blog rather between hardback covers is way past post modern, moreso for this blog that routinely uses numerical and reproducible findings, and is very well known and respected also in Europe.

    Personally I prefer to argue a case without looking like a clown.

  5. 23

    Must be more than 30,000 patent law professionals (that would be the same as “sockpuppets”) that love Gene Quinn so much, as Quinn’s site bypassed Patently-O this past year.

  6. 20

    Paul: When Dennis conducts and reports on his own statistical surveys of actual PTO records, it is only one level of hearsay if HE testifies in court that he, not being the custodian of records, looked at the records and determined a statistic. The proponent would still have to prove an exception (public records exception might apply, learned treatise exception probably would not).
    Seeing as Dennis was not in court, it is double hearsay. The hearsay might be admissible under one or more exceptions to inadmissibility, but it (1) it is still hearsay and (2) the party proponent did not (apparently) argue any exception. While the order seems to have ignored the issue (reissue applications take a long time, no matter who says so, and maybe the judge to that fact for granted). The issue might be relevant for my upcoming motion for stay. I think Dennis has a post about the pendency of reexam that I would have liked to use. But doesn’t the PTO publish its own statistics, so that a PTO issued report would neatly fit into a hearsay exception?

  7. 19

    That is reciprocal, right? If the plaintiff had truly cared about that point, they could equally have hired an expert to testify to the truth of the matter in court. I’m not sure saying “nobody cares” gets us anywhere.

  8. 18

    My new nick-name for over-designating things under the protective order.

    But hey, if you like this one, check my post Filed_Under_The_Cat.

  9. 15

    Seriously Dennis, for all that actually may read the blog, the vocal minority here do far more damage to credibility than you might imagine.

    Who knows, you may have to actually uphold some level of standards like Gene Quinn does over at IPWatchdog.

  10. 14

    I did not obtain a copy of the top-secret brief, but the judge cited portions of the brief in the opinion.

  11. 13

    If the defendant had truly cared about the point, it would have hired an expert to who could testify to the truth of the matter in court.

  12. 12

    “In a brief filed under seal, Tyco’s attorneys from Morgan Lewis called my post “unreliable” and “unsubstantiated” ”

    Um, if said brief was filed under a protective order, how did Good Professor Crouch obtain a copy???

  13. 11

    Dennis, but we are speaking of generalities rather than specifics. Would I find your blog more reliable than a published article by someone I didn’t know at all? Yes. But that is because I know you and this blog. A judge handling a patent case probably has neither kind of knowledge. The blogging format in general does not share those kinds of checks.

    Reliability for evidentiary purposes has to be a threshold determination at a certain level of generalization. If a judge must make a call on reliability only after taking the time to run through the history of your specific blog, then he might as well spend that time checking the PTO records himself and finding that the average pendency really is five years.

  14. 10

    TJ – I can’t see you really believing your statement that “A blog is necessarily going to be, on average, less reliable than a published article and other documents meeting the “learned treatise” exception, if for no other reason than that you have no citecheckers.”

    On Patently-O, there are 30,000 patent law professionals that regularly read this site. Every post is critiqued by multiple individuals who either post open comments or contacting me directly. When an error is identified, I then go and modify the post.

  15. 8

    A potential important difference is that my data reflects the average for all reissue prosecutions but does not separate-out cases going through expedited reissue

    Ok, separate out cases going through expedited reissue then. If the data is indeed not prone to hearsay, this result should be readily forthcoming. What does that data indicate?

    When Dennis conducts and reports on his own statistical surveys…,

    Well that depends, – is it like other academic studies where you have to “take their word for it?” (Note: this is not a knock on any academics or their studies and any relation to actual circumstances is purely happenstance).

    Now my detailed and exacting study found the exact opposite of the Big D study. Of course, I cannot show you the data and you only have to come to the same conclusion that I tell you to come to, but trust me.

  16. 7

    Paul, it is a statement made outside of court offered to prove the truth of the matter asserted (i.e. that average pendency is five years). It is hearsay. See FRE 801. The fact that Dennis conducted the research himself does not take it out of the rule.

    Dennis, I wouldn’t take it personally. A blog is necessarily going to be, on average, less reliable than a published article and other documents meeting the “learned treatise” exception, if for no other reason than that you have no citecheckers. Nor are you vetted by a gatekeeper such as law review editors. We may debate how much reliability those things add, but the answer is not zero.

  17. 6

    When Dennis conducts and reports on his own statistical surveys of the actual PTO file records of numerous patents that is NOT hearsay.

  18. 5

    Sorry Dennis, but your blog is unreliable and unsubstantiated by definition. It is hearsay, and unreliability and the inability to substantiate it is the cornerstone of the hearsay rule. For my purposes, yours is a great blog. As evidence offered to prove the truth of what you say, it is unreliable and unsubstantiated. I’m sure they weren’t trying to be mean.

  19. 3

    The attorneys wouldn’t have been doing their jobs if they didn’t try to question the accuracy of your post… I guess you wouldn’t be doing yours as a blogger if you didn’t try to stir up a comment from them to post about. :)

  20. 1

    Note: I contacted the Morgan Lewis attorneys who submitted the brief for a comment on what was particularly unreliable or unsubstantiated regarding my post. They have not responded.

    I hope you’re not holding your breath. ;)

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