Last week, the Delaware District
Court stayed the litigation proceedings in Enhanced Security
Research, LLC, et al. v. Cisco Systems, Inc., et al., C. A. No.
09-571-JJF, (June 25, 2010) at the defendant's request in view of two ongoing
patent reexaminations. As the Delaware
court statistically seems more receptive to stays than say, the Eastern
District of Texas Court in Marshall Texas, this development is not at all
Of more interest to me, is a
recent petition decision (April 15, 2010) in the inter partes
reexamination related to this litigation, 95/000489 (U.S. Patent 6,304,975).
In responding to the first
action, the Patentee filed a reply over the 50 page limit identified in
(37 CFR 1.943). Recognizing this problem, the patentee, at the time of
filing the reply, simultaneously petitioned for waiver of the page limit under
37 CFR § 1.183. In response, the Third Party filed an opposition petition under
37 CFR § 1.182 objecting to any waiver of the page limit and filed a petition
under 37 CFR § 1.183 to waive the rules to allow for consideration of
their § 1.182 petition.
In deciding the patent owner's
petition, the Office
of Patent Legal Administration (OPLA) granted the Patentee a waiver of the
50 page limit. Curiously, however, OPLA expunged the third party opposition
petitions from the record and took the position that third parties have no
right to oppose procedural filings of patent owners in inter partes
reexamination proceedings. OPLA reasoned that the inter partes
patent reexamination statutes only permit a single response to substantive
issues of patentability. While I don't necessarily disagree with OPLA's
action, I find the reasoning to be curious, as I have never seen an inter
partes patent reexamination in which third party opposition petitions were
not filed. In fact, the USPTO's Electronic File System (EFS) has a
selectable document code and corresponding description "Reexamination-
Opposition filed in response to petition." ..........What Gives?
Specifically, the petition
here) provides that:
As noted above, on February
5, 2010, third party requester filed a petition under 37 CFR 1.183 requesting
waiver of the rules for entry of its petition under 37 CFR 1.182 filed in
opposition to patent owner's January 29,2010 petition under 37 CFR 1.183.
However, the rules cannot be waived to provide the third party requester
the right to file a paper at the present stage in the '489 proceeding.
Pursuant to 35 U.S.C. §
314(b)(2), the third party requester in an ordered inter partes reexamination
proceeding has a statutory right to once file written comments to a patent
owner's response to an Office action on the merits.
Whether a patent owner's
petition under 37 CFR 1.183 for suspension of the rules is grantable is an
issue that goes to procedure and a showing of equities, rather than to the
merits. While enactment of the inter partes reexamination statute was for the
purpose of expanding a third party requester's participation in the merits of
the proceeding, there is no indication whatsoever in the legislative history of
the inter partes reexamination statute that the requester was granted any right
to challenge the granting of a petition under 1.183 for suspension of the rules
in an inter partes reexamination proceeding. Such a right was not
provided in the enactment of the inter partes reexamination statute (or in any
of its precursor bills), and there is no evidence to indicate that enacting
such a right was ever contemplated by Congress.
37 CFR 1.183 permits waiver
of the regulations in an extraordinary situation when justice requires.
Requester's February 5, 2010 petition, however, seeks to waive a requirement
set forth in 35 U.S.C. § 314(b)(2), which allows requester comments only in
response to a patent owner's response on the merits. Accordingly, the Office is
without statutory authority to consider the substance of third party
requester's February 5, 2010 petition paper. In this respect, third party
requester stands on a footing no different from any other member of the public
who wishes to challenge a procedural action taken by the Office in a
proceeding. The patent statute simply does not provide for such intervention.
As I mentioned above, the filing
of opposition petitions under § 1.183 is almost routine and explicitly
supported by EFS. I have even seen some Third Parties go as far as
filing a § 1.183 petition to oppose a patent owner's request for extension
of time. Are Third Parties permitted to simply file petitions on procedural
matters which do not oppose petitions filed by the Patentee? In other
words, is the opposition petition just a tool for the Patentee alone?
If the position of the Office is
that Third Party (i.e., Requester) opposition petition filings
on procedural issues are improper, a clarification via Federal
Register Notice is in order. Absent such clarification, the influx
of seemingly frivolous Third Party petitions will continue as a matter of
course in inter partes patent reexamination.
View more from Patents Post-Grant