Thursday, April 17, 2008

Inter Partes Re-exam Clarification

My podcast with attorney Michael C. Smith included a discussion about the effects of the patent re-exam on the rulings and other actions by Judge Clark in the Eastern District (TX) court room. Michael Feldstein asked a very good question regarding Clark's comments which seemed to assume that the re-exam was of the ex parte variety: "the current challenge is inter partes (modified inter partes due to the merger, actually), which operates under very different rules, has very different odds of success, and plays a very different strategic role in patent cases. I'd be curious to hear whether the knowledge that this is an inter partes challenge changes any of Michael's answers, particularly around the odds of ultimate success."

Mr. Clark responded as follows: "At this stage, the newer inter partes reexam is still so new that we don’t have any idea whether it will be faster or otherwise any different (including whether it’ll have a higher rate of success). However it does affect the likelihood of stay – in an order issued last year Judge Clark granted a stay in a case pending reexam and noted that one of the reasons was that it was inter partes – thus binding the defendant to the PTO’s decision on the cited art. Other ED judges have done the same, either because the reexam was inter partes or by granting a stay only if the defendants would agree to stipulations which treated it as such (more or less). The distinction does have some significance – we’re just not yet sure how much."

In other developments, D2L posted their latest legal document at the Patent Blog site. They are asking for a stay of the court proceedings while the re-exam is being completed. Of particular note in their document is the following (page 2):

"The PTO’s office action represents a virtual death knell for Bb’s patent and its claims of infringement against D2L. The PTO has rejected all claims in seven of the eight inter partes reexaminations that have issued, according to the most recent PTO statistics. Bb itself has recognized that reexaminations may well at least require amendment of the claims.1 If Bb does substantively amend its claims, D2L will acquire absolute intervening rights for those claims under 35 U.S.C. §§ 252 and 316(b). These intervening rights would remove any liability D2L had for infringing actions that take place prior to the issuance of the reexamination certificate. As a result, the Court should not require D2L to suffer the irreparable harm of paying a final judgment and complying with a permanent injunction."

IANAL-BIKSWI (free beer for the first person who figures that one out) and I would say that this attempt at a stay has a much better chance of success with Judge Clark than did their previous attempt at a Motion for Judgment as a Matter of Law and exhibits. I don't think the judge has ruled on that one yet, but I expect that they will not get very far in essentially asking Judge Clark to agree that errors were made in his court room, including some by him.


Downes said...


"I am not a lawyer - but I know someone who is"

Barry Dahl said...

Well done Stephen.

You can collect your beverage at the D2L Conference this July in Memphis, unless we happen to cross paths before then.

I thought this would be fairly challenging (you replied that it was). I almost went with IANAL-BIPOOTV and also considered IANAL-BIDSAAHIELN, but I didn't like the commercial tie-ins with either of those.

Cheers, Barry