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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 1 of 16

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

Plaintiff,

WALL CORPORATION,





BONDDESK GROUP, L.L.C., and
BONDDESK TRADING, L.L.C.,



Defendants.





v.










C.A. No. 07-844 (GMS)

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DEFENDANTS’ REPLY BRIEF IN SUPPORT OF THEIR MOTION

FOR A STAY PENDING INTER PARTES REEXAMINATION

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Mary B. Graham (#2256)
James W. Parrett, Jr. (#4292)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
[email protected]
Attorneys for BondDesk Group, L.L.C.
and BondDesk Trading, L.L.C.















OF COUNSEL:

Michael A. Jacobs
Rita F. Lin
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105-2482
(415) 268-7000

June 30, 2008
2248806



Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 2 of 16



TABLE OF CONTENTS

TABLE OF AUTHORITIES .......................................................................................................... ii

ARGUMENT...................................................................................................................................1

I.

WALL CANNOT POINT TO ANY SPECIFIC UNDUE
PREJUDICE. ...........................................................................................................1

Page

A.

A Generic Claim that Reexamination Takes Years Does
Not Demonstrate Undue Prejudice. .............................................................1

B. Wall Can Identify No Specific Undue Prejudice or Clear

Tactical Disadvantage that It Will Suffer. ...................................................4

C.

In Any Event, Wall Overstates the Length of Time
Affected by the Stay.....................................................................................5

II.

THE INTER PARTES REEXAMINATION OF THE SOLE
PATENT-IN-SUIT WILL NECESSARILY SIMPLIFY THE
ISSUES. ...................................................................................................................6

III. WALL CANNOT DISPUTE THAT THIS CASE IS IN ITS

INFANCY................................................................................................................8

IV.

BONDDESK’S MOTION FOR A STAY IS NOT PREMATURE. .......................9

CONCLUSION..............................................................................................................................10



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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 3 of 16



CASES

TABLE OF AUTHORITIES

Page(s)

01 Communique Lab., Inc. v. Citrix Sys., Inc.,

No. 06CV0253, 2008 U.S. Dist. LEXIS 19241 (N.D. Ohio Mar. 12, 2008).............................2

Alltech, Inc. v. Agra-Partners, Ltd.,

No. 3:06-CV-337-R, 2007 U.S. Dist. LEXIS 78977 (W.D. Ky. Oct. 23, 2007) .......................4

Anascape, Ltd. v. Microsoft Corp.,

475 F. Supp. 2d 612 (E.D. Tex. 2007).......................................................................................3

Applied Materials, Inc. v. Negevtech, Inc.,

No. C 04-03656 SI, 2005 WL 1656894 (N.D. Cal. July 14, 2005) .........................................10

Bausch & Lomb, Inc. v. Alcon Labs., Inc.,

914 F. Supp. 951, 38 U.S.Q.P.2d 1377 (W.D.N.Y.1996)...................................................... 3-4

Bausch & Lomb, Inc. v. Rexall Sundown, Inc.,

No. 03-CV-6620T, 2008 U.S. Dist. LEXIS 40385 (W.D.N.Y. May 19, 2008) ........................2

Cima Labs, Inc. v. Actavis Group HF,

Nos. 07-893 (DRD), 06-1970 (DRD), 2007 U.S. Dist. LEXIS 41516, at *25 (D.N.J.
June 7, 2007)..............................................................................................................................3

Cognex Corp. v. Nat’l Instruments Corp.,

No. 00-442-JJF, 2001 WL 34368283 (D. Del. June 29, 2001)..................................................4

Cooper Techs. Co. v. Thomas & Betts Corp.,

No. 2:06-CV-242, 2008 WL 906315 (E.D. Tex. Mar. 31, 2008) ..............................................3

EchoStar Techs. Corp. v. TiVo, Inc.,

No. 5:05-CV-81 (DF), 2006 U.S. Dist. LEXIS 48431 (E.D. Tex. July 14, 2006).....................7

Equipements de Transformation IMAC v. Anheuser-Busch Cos.,

No. 07-13306, 2008 U.S. Dist. LEXIS 47163 (E.D. Mich. June 17, 2008) ..............................2

eSoft, Inc. v. Blue Coat Sys., Inc.,

505 F. Supp. 2d 784 (D. Colo. 2007)..................................................................................... 2-3

Genoa Color Techs., Ltd. v. Samsung Elecs. Am., Inc.,

No. 07 Civ. 6233 (PKC), 2008 WL 754681 (S.D.N.Y. Mar. 12, 2008 .....................................3

Gold v. Johns-Manville Sales Corp.,

723 F.2d 1068 (3d Cir.1983)......................................................................................................4

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 4 of 16


Ho Keung Tse v. Apple, Inc.,

No. C 06-06573 SBA, 2007 U.S. Dist. LEXIS 76521 (N.D. Cal. Oct. 4, 2007)................... 4-5

In re Trans Tex. Holdings Corp.,

498 F.3d 1290 (Fed. Cir. 2007)..................................................................................................3

Middleton, Inc. v. Minn. Mining & Mfg. Co.,

No. 4:03-cv-40493, 2004 U.S. Dist. LEXIS 16812 (S.D. Iowa Aug. 24, 2004) .......................3

Network Appliance, Inc. v. Sun Microsystems, Inc.,

No. C-07-06053 EDL, 2008 WL 2168917 (N.D. Cal. May 23, 2008)......................................3

Pegasus Dev. Corp. v. DirecTV, Inc.,

No. 00-1020-GMS, 2003 U.S. Dist. LEXIS 8052 (D. Del. May 14, 2003)...........................4, 9

Photoflex Prods., Inc. v. Circa 3 LLC,

No. C 04-03715 JSW, 2006 U.S. Dist. LEXIS 37743 (N.D. Cal. May 24, 2006).....................2

Premier Int’l Assocs., LLC v. Hewlett-Packard Co.,

Nos. 2:07-CV-395(DF), 2:07-CV-396(DF), 2008 WL 2138158 (E.D. Tex. May 19,
2008) ..........................................................................................................................................2

Procter & Gamble Co. v. Kraft Foods Global, Inc.,

No. C 07-4413 PJH, 2007 U.S. Dist. LEXIS 78465 (N.D. Cal. Oct. 11, 2007) ........................3

Research in Motion, Ltd. v. Visto Corp.,

545 F. Supp. 2d 1011 (N.D. Cal. 2008) .....................................................................................2

Saint-Gobain Performance Plastics Corp. v. Advanced Flexible Composites, Inc.,

436 F. Supp. 2d 252 (D. Mass. 2006) ......................................................................................10

Sorensen v. Black & Decker Corp.,

No. 06cv1572 BTM (CAB), 2007 U.S. Dist. LEXIS 66712 (S.D. Cal. Sept. 10, 2007)...........4

Sorensen v. Digital Networks N. Am., Inc.,

No. C 07-05568 JSW, 2008 U.S. Dist. LEXIS 6454 (N.D. Cal. Jan. 16, 2008)........................2

Tesco Corp. v. Varco I/P, Inc.,

No. H-05-2118, 2006 U.S. Dist. LEXIS 82047 (S.D. Tex. Nov. 9, 2006) ................................3

Tomco2 Equip. Sys. Co. v. Se. Agri-Systems, Inc.,

542 F. Supp. 2d 1303 (N.D. Ga. 2008)......................................................................................2

Xerox Corp. v. 3Com Corp.,

69 F. Supp. 2d 404 (W.D.N.Y. 1999)......................................................................................10



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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 5 of 16


STATUTES

35 U.S.C. § 312(a) ...........................................................................................................................9

35 U.S.C. § 315(c) ...........................................................................................................................7



RULES AND OTHER AUTHORITY

Fed. R. Civ. P. 11.............................................................................................................................9

Fed. R. Civ. P. 26(d)(1)....................................................................................................................8

Fed. R. Civ. P. 26(f).........................................................................................................................8

PTO. Manual of Patent Examining Procedures § 2686.04 ......................................................... 5-6





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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 6 of 16



In its opening brief, BondDesk outlined the powerful effect of inter partes

reexaminations on narrowing issues in subsequent litigation. Here, the patent-in-suit contains

fifteen claims. If any are amended or cancelled, that will narrow and alter the issues. Moreover,

because inter partes reexamination bars relitigation of issues raised before the PTO, the issues

would be narrowed even if all claims survived unamended. Wall does not contest these points.

Instead, Wall’s principal argument is a generic claim that inter partes reexamination can

take years. Without pointing to specifics, Wall speculates that memories could fade, evidence

could be lost, or the defendants could go out of business. That generic argument, which could be

applied to any motion to stay pending inter partes reexamination, does not constitute a showing

of undue prejudice. Courts have repeatedly held that the delay inherent in the reexamination

process does not constitute undue prejudice. In fact, by routinely granting stays pending inter

partes reexamination, courts have overwhelmingly rejected such generic claims of delay.

Wall makes generic arguments because it can point to no facts specific to this litigation

that weigh against a stay. If this case does not qualify for a stay pending inter partes

reexamination, it is difficult to imagine what case would. This litigation is in its infancy, with no

case scheduling order or trial date. Reexamination is requested as to the sole patent in issue. As

a non-practicing entity, Wall has an adequate remedy at law. This litigation should be stayed.

ARGUMENT

I.

WALL CANNOT POINT TO ANY SPECIFIC UNDUE PREJUDICE.

A.

A Generic Claim that Reexamination Takes Years Does Not Demonstrate
Undue Prejudice.

Wall claims undue prejudice based on the delay inherent in the inter partes

reexamination process. (Opp. at 4-6.) Yet, courts have repeatedly held that “[t]he delay inherent

to the [PTO’s] reexamination process [of a patent claim] does not constitute, by itself, undue

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 7 of 16


prejudice.” Photoflex Prods., Inc. v. Circa 3 LLC, No. C 04-03715 JSW, 2006 U.S. Dist. LEXIS

37743, at *5 (N.D. Cal. May 24, 2006); see also Sorensen v. Digital Networks N. Am., Inc.,

No. C 07-05568 JSW, 2008 U.S. Dist. LEXIS 6454, at *5 (N.D. Cal. Jan. 16, 2008) (same);

Research in Motion, Ltd. v. Visto Corp., 545 F. Supp. 2d 1011, 1012 (N.D. Cal. 2008) (“the

delay in having [reexamined] claims adjudicated in court, does not, by itself, constitute undue

prejudice”); eSoft, Inc. v. Blue Coat Sys., Inc., 505 F. Supp. 2d 784, 789 (D. Colo. 2007) (“While

Plaintiff argues that the PTO [inter partes] reexamination process could last two years — and up

to five if Plaintiff were to receive and appeal an unfavorable decision — Plaintiff neglects to

articulate how such delays would unduly prejudice its position in the instant litigation.”).

Indeed, if Wall’s generic complaint about the time required for inter partes

reexamination were sufficient to bar a stay, no case would ever qualify for a stay pending inter

partes reexamination. Yet, despite Wall’s claim that “motions to stay for an inter partes

reexamination are frequently denied” (Opp. at 7), virtually every court considering a motion to

stay pending inter partes reexamination has granted that motion. Those courts have implicitly,

and often explicitly, rejected the notion that the time required for such reexaminations should

automatically preclude a stay.1 Those few courts that have denied stays pending inter partes


1 See Equipements de Transformation IMAC v. Anheuser-Busch Cos., No. 07-13306, 2008

U.S. Dist. LEXIS 47163, at *16, 17 (E.D. Mich. June 17, 2008) (staying pending inter partes
reexamination because, although “[t]he plaintiff claims that reexamination proceedings could
last three to four years,” “the plaintiff has not shown prejudice” and “did not request
preliminary injunctive relief”); Bausch & Lomb, Inc. v. Rexall Sundown, Inc., No. 03-CV-
6620T, 2008 U.S. Dist. LEXIS 40385, at *9 (W.D.N.Y. May 19, 2008) (staying pending
inter partes reexamination) (“Nor do I find that the disadvantages of the delay that invariably
will be occasioned by the requested stay outweigh the advantages to this litigation that will
result from the PTO’s ultimate determination.”); Premier Int’l Assocs., LLC v. Hewlett-
Packard Co., Nos. 2:07-CV-395(DF), 2:07-CV-396(DF), 2008 WL 2138158, at *5 (E.D.
Tex. May 19, 2008) (staying pending inter partes reexamination); 01 Communique Lab.,
Inc. v. Citrix Sys., Inc., No. 06CV0253, 2008 U.S. Dist. LEXIS 19241 (N.D. Ohio Mar. 12,
2008) (same); Tomco2 Equip. Sys. Co. v. Se. Agri-Systems, Inc., 542 F. Supp. 2d 1303, 1307,
(Continued . . .)

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 8 of 16


reexamination have done so because either (1) inter partes reexamination was not sought on all

of the patents-in-suit and thus would not necessarily simplify the case or (2) a scheduling order

was already in place and there were impending case deadlines.2 Neither condition applies here.

Wall argues that this case could go to trial before the inter partes procedure is completed.

(Opp. at 5.) That danger argues in favor of a stay, not against it. The Federal Circuit has held

that the PTO would not be bound in its reexamination by the determinations of this Court. In re

Trans Tex. Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007). Accordingly, if this litigation

were to go to trial, and BondDesk were found to be infringing a valid patent, the PTO could still

later find the patent invalid. See Bausch & Lomb, Inc. v. Alcon Labs., Inc., 914 F. Supp. 951,


(. . . continued)

1312 (N.D. Ga. 2008) (staying pending inter partes reexamination because “[t]he Court sees
no potential prejudice to the parties,” despite the potential for “a significant delay of
plaintiff’s case”); Cima Labs, Inc. v. Actavis Group HF, Nos. 07-893 (DRD), 06-1970
(DRD), 2007 U.S. Dist. LEXIS 41516, at *25 (D.N.J. June 7, 2007) (staying pending inter
partes reexamination, while acknowledging that “the procedure may not operate as
expeditiously as some may have expected”); eSoft, 505 F. Supp. 2d at 789 (staying pending
inter partes reexamination because the two to five year delay cited by plaintiffs was not
sufficient to demonstrate undue prejudice); Procter & Gamble Co. v. Kraft Foods Global,
Inc., No. C 07-4413 PJH, 2007 U.S. Dist. LEXIS 78465, at *4 (N.D. Cal. Oct. 11, 2007)
(granting stay pending inter partes reexamination); Anascape, Ltd. v. Microsoft Corp.,
475 F. Supp. 2d 612, 615, 617 (E.D. Tex. 2007) (same); Tesco Corp. v. Varco I/P, Inc., No.
H-05-2118, 2006 U.S. Dist. LEXIS 82047 (S.D. Tex. Nov. 9, 2006) (same); Middleton,
Inc. v. Minn. Mining & Mfg. Co., No. 4:03-cv-40493, 2004 U.S. Dist. LEXIS 16812 (S.D.
Iowa Aug. 24, 2004) (same).

2 See Network Appliance, Inc. v. Sun Microsystems, Inc., No. C-07-06053 EDL, 2008 WL

2168917, at *3 (N.D. Cal. May 23, 2008) (“[s]taying the case as to the three patents in
reexamination [out of sixteen in the suit] is not nearly as likely to significantly simplify this
litigation as much as did the stays issued in those single patent cases”); Cooper Techs. Co. v.
Thomas & Betts Corp., No. 2:06-CV-242, 2008 WL 906315, at *2 (E.D. Tex. Mar. 31, 2008)
(denying stay where one patent-in-suit was in inter partes reexamination and the other patent
was in ex parte reexamination, because the concurrent use of the ex parte reexamination
procedure on a related patent would allow the requester to avoid the estoppel effect ordinarily
created by inter partes reexamination); Genoa Color Techs., Ltd. v. Samsung Elecs. Am.,
Inc., No. 07 Civ. 6233 (PKC), 2008 WL 754681, at *1 (S.D.N.Y. Mar. 12, 2008) (denying
stay where reexamination was sought four months after scheduling order setting trial date
issued, and fact discovery was set to conclude in less than seven months).

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 9 of 16


952, 38 U.S.Q.P.2d 1377, 1378 (W.D.N.Y.1996). At that point, this Court and the parties would

have wasted tremendous resources and defendants might not be able recover the damages that

they had wrongfully been forced to pay. Id.; see also Sorensen v. Black & Decker Corp., No.

06cv1572 BTM (CAB), 2007 U.S. Dist. LEXIS 66712, at *15 (S.D. Cal. Sept. 10, 2007)

(discussing the “prejudice[]” and “irreparable harm” defendant would suffer); Ho Keung Tse v.

Apple, Inc., No. C 06-06573 SBA, 2007 U.S. Dist. LEXIS 76521, at *10 (N.D. Cal. Oct. 4, 2007)

(describing the “wasted resources . . . if this action goes to trial prior to the re-examination”).

Wall’s argument reinforces the danger of prejudice absent a stay.3

B. Wall Can Identify No Specific Undue Prejudice or Clear Tactical

Disadvantage that It Will Suffer.

Wall speculates about purported “tactical disadvantage[s]” that it might suffer: that

memories could fade, evidence could be lost, or BondDesk could go out of business. (Opp. at 6-

7.) Wall has no specific indication that any of those events will occur. Instead, Wall’s objection

is simply a generic statement about the inherent effects of the passage of time. That is no basis

to deny a stay. See Alltech, Inc. v. Agra-Partners, Ltd., No. 3:06-CV-337-R, 2007 U.S. Dist.

LEXIS 78977, at *5 (W.D. Ky. Oct. 23, 2007) (“The mere possibility that memories could fade

is not enough to outweigh the benefits of staying these proceedings.”) (staying pending

reexamination). Moreover, BondDesk’s witnesses and evidence will be equally affected. Id.


3 Wall incorrectly demands a showing that BondDesk will suffer “hardship” absent a stay.
(Opp. at 7-8.) That is not the standard. See, e.g., Pegasus Dev. Corp. v. DirecTV, Inc., No.
00-1020-GMS, 2003 U.S. Dist. LEXIS 8052, at *3-4 (D. Del. May 14, 2003) (the test is
“whether a stay would unduly prejudice . . . the non-moving party” (emphasis added)). The
cases cited by Wall refer to changing an agreed-upon trial date on the eve of trial, not moving
to stay pending reexamination at a case’s inception. See Cognex Corp. v. Nat’l Instruments
Corp., No. 00-442-JJF, 2001 WL 34368283, at *1 (D. Del. June 29, 2001); Gold v. Johns-
Manville Sales Corp., 723 F.2d 1068, 1076-77 (3d Cir.1983). In any event, BondDesk has
shown the hardship of a potential trial before reexamination is completed. (See also Br. at 7.)

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 10 of 16



Wall further objects that a stay will “prevent” it from “enforcing the patent against other

infringers.” (Opp. at 7.) But “allegedly infringing non-parties” have “nothing to do with the

instant proceedings.” Ho Keung Tse, 2007 U.S. Dist. LEXIS 76521, at *13-14. “Those third

parties are not parties to this litigation, nor does [Wall] explain why [it] is unable to pursue [its]

claims against them now or how staying this case will deprive [it] of such claims.” Id. at *14.

In the end, Wall does not contest the key point: it is a patent holding company that does

not practice the invention. Damages will serve as an adequate remedy at law if Wall prevails.

C.

In Any Event, Wall Overstates the Length of Time Affected by the Stay.

Even if a generic claim of delay could establish undue prejudice, Wall overstates the

delay. BondDesk has proposed that any party may move to lift the stay after its entry and that,

after the PTO concludes its review but before any appeal to the BPAI or Federal Circuit, the

parties provide a status update stating their positions about continuing the stay. If new factual

developments truly caused specific undue prejudice to Wall, it could seek to lift the stay then.

In any event, Wall’s dire warnings about the time for reexamination are overstated.

Wall’s statistics and examples ignore a key factor: as explained in BondDesk’s opening brief,

the PTO provides expedited treatment for inter partes reexaminations that are in litigation.

When the PTO is aware that the patent is in litigation, the reexamination proceeding “will take

precedence to any other action taken by the examiner” at the PTO. Manual of Patent Examining

Procedures § 2686.04 (emphasis added). Where “litigation is stayed for the purpose of

reexamination, all aspects of the [reexamination] proceeding will be expedited to the extent

possible. Cases will be taken up for action at the earliest time possible, and time periods set in

actions may be extended only upon a strong showing of sufficient cause.” Id. Where such

reexamination has been pending more than a year, the PTO may set a one-month “shortened

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statutory period for response rather than the two months usually set.” Id. Wall’s statistics,

which lump together cases in litigation and those that are not, ignore this distinction. (Opp., at

Ex. I.) Similarly, although Wall cites two “examples” of pending reexaminations (Opp., at

Exs. F, G), the PTO files for those reexaminations contain no notification of pending litigation,

so the PTO could not have provided expedited review there.

Wall’s statistics also ignore improvements that the PTO has made to speed up processing

of inter partes reexaminations. In 2005, the PTO created a new unit with twenty full-time

examiners devoted solely to reexaminations. (See Ex. A hereto.) Wall’s statistics, which are

based on all reexaminations requested since 2001, do not distinguish between reexaminations

addressed by the new dedicated unit and others predating the creation of that unit.

More fundamentally, Wall ignores that the time required for reexamination increases

when reexamination is most valuable: that is, where the examiner has initially rejected the

claims and the patentee is offering counter-arguments for allowance or proposing amendments.

(See, e.g., Ex. B hereto (long-running reexamination with claims twice amended after multiple

rejections).) In those situations, some or possibly all claims are likely to be cancelled or

amended, with profound effects on the litigation. When reexamination is taking the longest, that

is typically when the need to stay pending reexamination is the greatest.

II.

THE INTER PARTES REEXAMINATION OF THE SOLE PATENT-IN-SUIT
WILL NECESSARILY SIMPLIFY THE ISSUES.

Wall contends that, in reexamination, “[a]ll the claims could just as easily be confirmed

as cancelled.” (Opp. at 9.) Even if some but not all claims are cancelled or amended, a stay will

avoid wasting resources on claims that were invalid or have been rewritten. And, even in the

unlikely event that all claims survive reexamination, that will streamline the litigation as well.

As explained in BondDesk’s opening brief, in an inter partes reexamination, unlike in an ex

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 12 of 16


parte reexamination, a third-party requester is estopped in litigation from asserting invalidity on

any ground “which the third-party requester raised or could have raised during the inter partes

reexamination proceedings.” 35 U.S.C. § 315(c). (Br. at 6.) Because of that powerful estoppel

effect, many invalidity issues will be conclusively resolved in reexamination. That is why “an

inter partes reexamination can have no other effect but to streamline ongoing litigation.”

EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-CV-81 (DF), 2006 U.S. Dist. LEXIS 48431, at *9

(E.D. Tex. July 14, 2006). Wall offers no response to this crucial point.

Moreover, it is statistically unlikely that the patent’s claims will survive at all. As noted

in BondDesk’s opening brief, the latest PTO report showed that 82% of patents in inter partes

reexamination had all claims canceled, and only 9% survived with all claims allowed. (Br. at 6.)

Wall argues that these statistics could be skewed because only eleven reexamination certificates

had been issued at the time of the report. (Opp. at 8.) However, the same results apply when

examining interim rulings made in pending inter partes reexaminations. As of July 1, 2005, the

PTO had cancelled all claims on which reexamination was requested in 84% of the 76 pending

reexaminations, and allowed all claims in only 1% of cases. (Ex. C hereto, at 17.)

Wall’s principal response is to attack BondDesk’s reexamination request as “weak.”

(Opp. at 9.) Even if that were true, reexamination would streamline the litigation by

conclusively precluding relitigation of those “weak” arguments in this Court. And, in any event,

Wall’s assertion is misplaced. Wall criticizes BondDesk for filing a 900-page request that uses

“thirteen references in eleven different combinations.” That speaks to the strength of

BondDesk’s request, not its weakness. BondDesk’s request shows that Claims 1-3, 6, 8, 11, 12,

14, and 15 can be invalidated by any one of three independent references. Claims 9, 10, and 13

can be invalidated by either the BondExchange Manual alone or any one of six combinations.

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Claims 4, 5, and 7 can be invalidated by any one of the Buist patent alone, the BondExchange

Manual alone, or a combination of two other references.4

It is true that BondDesk’s request is complex in the sense that different references, alone

or in combination, invalidate different claims. But that complexity merely reinforces the value

of having those references conclusively evaluated by expert examiners at the PTO, BPAI, and

Federal Circuit first, rather than wasting the Court’s and the parties’ resources on a complex,

lengthy claim construction and jury trial that could be mooted by the PTO’s conclusions.

III. WALL CANNOT DISPUTE THAT THIS CASE IS IN ITS INFANCY.

Wall does not dispute that no discovery has been exchanged, no trial date has been set,

and no initial case management conference has been scheduled. Instead, Wall argues (1) that

BondDesk “refus[ed] to submit to discovery,” and (2) that Wall invested resources in its pre-

filing investigation and settlement efforts. (Opp. at 10-11.) Both arguments are inapposite.

BondDesk has no obligation to begin discovery yet. The Federal Rules of Civil

Procedure provide for a stay of discovery until the parties have conferred regarding a discovery

plan. Fed. R. Civ. P. 26(d)(1). The parties’ conference is typically held 21 days prior to the

initial case management conference, to ensure that discovery proceeds under a plan overseen by

the Court. Fed. R. Civ. P. 26(f). As no initial case management conference has been scheduled,

BondDesk had no obligation to confer on a discovery plan to be approved at that conference or,

concomitantly, to open discovery. Indeed, it would have been wasteful for BondDesk to open


4 Wall asserts that two combinations involve art with priority dates after the claimed priority

date of the patent. (Opp. at 9.) As explained in the reexamination request, that is because the
patent is not entitled to its claimed priority date, due to insufficient disclosures. (Br., at Ex. 1
at 10-16.) Wall further complains that the BondExchange Manual was not “published.”
(Opp. at 9-10.) In fact, as explained in the reexamination request, the BondExchange Manual
was posted online and widely distributed without restrictions. (Br., at Ex. 1 at 68-71.)

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Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 14 of 16


discovery and embroil the Court and the parties in potential discovery disputes that would likely

be mooted by the reexamination that BondDesk planned to seek.

As to Wall’s argument that it has expended resources in pre-filing investigation and on

two settlement meetings, that is irrelevant. As Wall concedes, the test is “whether discovery is

complete and a trial date has been set.” (Opp. at 3.) Neither has occurred here. Moreover,

Wall’s pre-filing investigation is part of its duties under Rule 11. Such investigation should have

occurred in every case where a stay is sought, and does not argue against a stay. Nor do Wall’s

settlement efforts indicate that Wall would be prejudiced by a stay. Laying the groundwork for a

potential settlement likely will not be wasted effort, as parties frequently renew settlement

discussions following reexamination. See Pegasus, 2003 U.S. Dist. LEXIS 8052, at *6 (noting

that “the outcome of the reexamination process may encourage a settlement”).

IV.

BONDDESK’S MOTION FOR A STAY IS NOT PREMATURE.

Unable to point to any specific facts showing undue prejudice, to dispute the powerful

narrowing effect of inter partes reexamination, or to show a trial date has been set or discovery

completed, Wall falls back on arguing that BondDesk’s motion is premature because the PTO

has not yet issued an order stating that it will reexamine. (Opp. at 2-3.) As explained in

BondDesk’s opening brief, requests for inter partes reexamination are granted 96% of the time.

(Br. at 8.) Accordingly, courts have repeatedly found that the best course is to issue a stay, with

the intention of lifting the stay in the unlikely event that reexamination is denied. (Id.) By

statute, the PTO’s decision must be made by September 3, 2008. 35 U.S.C. § 312(a).

Wall offers no response to these points, other than to cite two cases denying without

prejudice motions to stay where the PTO had not yet ordered reexamination. (Opp. at 3 n.8.)

Those courts refused to stay, though, because those cases were at an advanced stage, where there

- 9 -

Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 15 of 16


was something to be gained by actively proceeding while awaiting the PTO’s ruling.5 By

contrast, here, discovery has not yet opened and no case deadlines have been set, so there is no

prejudice to Wall in waiting another two months, at most, for the PTO to rule.

CONCLUSION

All three factors weigh strongly in favor of a stay. For the foregoing reasons, the Court

should stay the instant litigation pending inter partes reexamination of the patent-in-suit.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Mary B. Graham
_____________________________________
Mary B. Graham (#2256)
James W. Parrett, Jr. (#4292)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
[email protected]
Attorneys for BondDesk Group, L.L.C.
and BondDesk Trading, L.L.C.













OF COUNSEL:
Michael A. Jacobs
Rita F. Lin
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105-2482
(415) 268-7000

June 30, 2008
2388970


5

See Applied Materials, Inc. v. Negevtech, Inc., No. C 04-03656 SI, 2005 WL 1656894, at *2
(N.D. Cal. July 14, 2005) (denying stay without prejudice to renewal because the “parties
have engaged in substantial discovery and currently have summary judgment motions
pending”); Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404, 405 (W.D.N.Y. 1999) (denying
stay without prejudice to renewal where reexamination was requested “[d]ays after this
Court’s denial of defendants’ motion for summary judgment”). It is not clear whether Wall
also intended to cite Saint-Gobain Performance Plastics Corp. v. Advanced Flexible
Composites, Inc., 436 F. Supp. 2d 252 (D. Mass. 2006), for this proposition. In any event,
Saint-Gobain did not deny the requested stay as premature, but rather denied the stay for
reasons unrelated to the pendency of the PTO’s ruling. 436 F. Supp. 2d at 253.

- 10 -

Case 1:07-cv-00844-GMS Document 14 Filed 06/30/2008 Page 16 of 16



CERTIFICATE OF SERVICE

I hereby certify that on June 30, 2008, I caused the foregoing to be electronically

filed with the Clerk of the Court using CM/ECF which will send electronic notification of such

filing to the following:

Karen E. Keller, Esq.
YOUNG CONAWAY STARGATT & TAYLOR, LLP


Additionally, I hereby certify that true and correct copies of the foregoing were



caused to be served on June 30, 2008 upon the following individuals in the manner indicated:

BY E-MAIL AND HAND DELIVERY

John W. Shaw, Esq.
Karen E. Keller, Esq.
YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Brandywine Building
1000 West Street, 17th Floor
Wilmington, DE 19801

[email protected]
[email protected]

BY E-MAIL

Michael W. Shore, Esq.
Alfonso Garcia Chan, Esq.
SHORE CHAN BRAGALONE LLP
325 North Saint Paul Street
Suite 4450
Dallas, TX 75201

[email protected]
[email protected]

/s/ Mary B. Graham
______________________________________
Mary B. Graham (#2256)





Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 1 of 24









EXHIBIT A

Press Release, 05-38

Page 1 of 2

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 2 of 24

United States Patent and Trademark Office

NEWS(cid:160)

(cid:160)

Home| Site Index| Search| FAQ| Glossary| Guides| Contacts| eBusiness| eBiz alerts| News| Help

Press Releases > USPTO Improves Process for Reviewing Patents

PRESS RELEASE
Contact:
Ruth Nyblod
571-272-8400
[email protected]

July 29, 2005
#05-38

USPTO IMPROVES PROCESS FOR REVIEWING PATENTS

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has
implemented new processes for handling reexamination proceedings to improve timeliness and quality.
Patent reexamination is a valuable, low-cost alternative to litigation for determining the patentability of the
claims in an issued patent. Requests for the USPTO to reexamine a patent can be made as long as written
evidence is presented that raises a substantial new question of patentability.

“Timeliness and correctness of decisions in reexamination proceedings are important to providing certainty
for all users of the patent system,” noted Under Secretary of Commerce for Intellectual Property and Director
of the USPTO Jon Dudas. “We have a duty to the American public to get reexaminations right and to
conduct them with dispatch so they remain an effective tool.”

The USPTO’s goal is that reexaminations that have been pending with an examiner more than two years
now will be resolved by October 1, 2005. In addition, all future reexamination proceedings will be completed
within a specific timeframe, which is expected to be less than two years. In March 2005 there were over 420
reexaminations that had been pending more than two years and that number would have grown to over 600
by the end of September 2005. Today, fewer than 360 cases remain, with nearly half in the final stages. To
ensure the quality of these proceedings, all reexamination decisions now require a thorough review by a
panel of supervisors and senior patent examiners. Reexaminations where an initial decision has been made
will remain with the examiner originally assigned to the reexamination. All other reexaminations will be
reassigned to a newly formed central reexamination unit.

Prior to the new initiative, reexamination cases were assigned to examiners according to technology. Under
the new initiative, 20 highly skilled primary examiners who have a full understanding of reexamination
practice and relevant case law will concentrate solely on reexamination. The 20-examiner unit began
operation earlier this week and all new requests for reexamination will be assigned to them. Using skilled
examiners assigned to a single unit will enhance the quality and reduce the time of reexaminations by
allowing the USPTO to monitor more effectively the reexamination operations.

# # #

| HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY(cid:160)

Last Modified: 09/06/2007 09:01:08

http://www.uspto.gov/web/offices/com/speeches/05-38.htm

6/26/2008

(cid:160)
Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 3 of 24









EXHIBIT B

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 4 of 24

Page 1 of 2

95/000,090

SCANNING FORCE MICROSCOPE PROBE CANTILEVER WITH
REFLECTIVE STRUCTURE

06-27-
2008::12:54:52

Transaction Description

Request for Extension of Time
Certificate of Service
Request for Extension of Time
Action Closing Prosecution.
Reexam Litigation Search Conducted

Third Party Requester Comments after Non-final Action
Certificate of Service
Information Disclosure Statement (IDS) Filed
Response after non-final action - owner - timely
Information Disclosure Statement Filed
Certificate of Service

Certificate of Service
Case Docketed to Examiner in GAU
Case Docketed to Examiner in GAU
Ready for Examiner Action after Nonfinal
Third Party Requester Comments after Non-final Action
Third Party Requester Comments after Non-final Action
Response after non-final action - owner - timely

(cid:160)Transaction History
Date
04-14-2008 Date Forwarded to Examiner
10-04-2007
10-04-2007
09-06-2007
09-06-2007
09-06-2007
09-06-2007
07-26-2007 Mailing of Petition Decision - Granted
07-17-2007
07-17-2007
07-17-2007
07-02-2007
06-28-2007
04-23-2007 Miscellaneous Incoming Letter
04-23-2007
01-29-2007
10-23-2006
08-31-2006
08-14-2006
07-17-2006
07-13-2006
06-30-2006 Notification of Informal or Nonresponsive Amendment
06-16-2006
06-16-2006
06-07-2006
04-14-2006 Non-final action mailed
03-22-2006
03-22-2006
03-16-2006
10-27-2005
10-26-2005
10-20-2005
10-20-2005
10-14-2005
10-11-2005
10-11-2005
09-26-2005 Notification of Informal or Nonresponsive Amendment
09-12-2005
09-12-2005
07-18-2005 Non-final action mailed
07-18-2005
05-19-2005

Information Disclosure Statement Filed
Informal response/amendment

Inter partes Reexamination Ordered
Case Docketed to Examiner in GAU

Certificate of Service
Informal response/amendment
Case Docketed to Examiner in GAU

Correspondence Address Change
Change in Power of Attorney (May Include Associate POA)
Ready for Examiner Action after Nonfinal
Correspondence Address Change
Correspondence Address Change
Certificate of Service
Correspondence Address Change
Response after non-final action - owner - timely
Reexam - Information Disclosure Statement Filed by Third Party Requester
Third Party Requester Comments after Non-final Action

http://portal.uspto.gov/external/PA_1_0_15H/PAIRPrintServlet

6/27/2008

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 5 of 24

Page 2 of 2

Completion of Preprocessing - Released to Assigned GAU
Application Is Now Complete

05-16-2005
05-16-2005
06-14-2005 Notice of Reexam Published in Official Gazette
05-16-2005 Notice of assignment of reexamination request
05-16-2005 Notice of reexamination request filing date
05-16-2005
05-02-2005

Title Report
Receipt of Original Inter Partes Reexam Request

Close Window

http://portal.uspto.gov/external/PA_1_0_15H/PAIRPrintServlet

6/27/2008

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 6 of 24

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 7 of 24









EXHIBIT C

Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 8 of 24

What’s Really Happening in

1

Introduction

Reexamination1
Joseph D. Cohen2

Inter partes reexamination has been with us for almost four years.3 During that time,

we’ve had many comments on inter partes procedures.4 Some say that the inter partes

1 Copyright ©2004, 2005 Joseph D. Cohen, Stoel Rives LLP.

This paper is based on the article first published in the March 2005 issue of the JOURNAL

OF THE PATENT AND TRADEMARK OFFICE SOCIETY, 87 J. PAT. & TRADEMARK OFF. SOC’Y 207
(2005).

2 Partner in the Patent Law Group of Stoel Rives LLP, Portland, Oregon. My direct dial

number is 503.294.9452, and my email is [email protected]

3 This depends on how you count: from the effective date of the legislation, or from the

first inter partes proceeding.

The inter partes reexamination legislation became effective November 29, 1999. The

procedure is part of the American Inventors Protection Act of 1999, which is part of the
Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-113,
113 Stat. 1501.

You can request inter partes reexam only for patents issued on applications filed on or

after the effective date of the Act. See, e.g., 37 C.F.R. § 1.913 (2004); MANUAL OF PATENT
EXAMINING PROCEDURE (Rev. 2, May 2004) (“MPEP”) §§ 2610-2611. The PTO issued the first
such design patent, D422,822 (“Toothbrush holder”) April 18, 2000, and the first such utility
patent, 6,062,457 (“Stapler”) May 16, 2000.

It took another 1 1/2 years before the first inter partes reexamination proceeding. On
July 26, 2001, Lance G. Johnson of Roylance, Abrams, Berdo & Goodman, Washington, DC,
delivered the first inter partes reexam request: 95/000,001. The PTO assigned the request a July
27, 2001, filing date. Examiner Rabon Sergent examined the case.

4 E.g., Kenneth L. Cage & Lawrence T. Cullen, An Overview of Inter Partes

Reexamination Procedures, 85 J. PAT. & TRADEMARK OFF. SOC’Y 931 (2003); Robert E.
Cannuscio, Optional Inter Partes Reexamination: A Practitioner’s Perspective, SF84 A.L.I.-
A.B.A. 75 (2000); Natalie M. Derzko & John W. Behringer, Inter Partes Reexamination Starting
In 2003 – A Potentially Useful Approach To Challenging Invalid Biotechnology Patents, 21
NATURE BIOTECH. 823-825 (2003) Michael L. Goldman & Alice Y. Choi, The New Optional
Inter Partes Reexamination Procedure and Its Strategic Use, 28 AIPLA Q.J. 307 (2000);
Mark D. Janis, Inter Partes Patent Reexamination, 10 FORDHAM INTELL. PROP. MEDIA & ENT.
L.J. 481 (2000); Lance G. Johnson, Inter Partes Reexamination: The USPTO Alternative to
Patent Litigation, SCITECH LAWYER, Fall 2004, at 12; Sherry M. Knowles et al., Inter Partes
Reexamination in the United States, 86 J. PAT. & TRADEMARK OFF. SOC’Y 611 (2004);
Frederick C. Williams, Giving Inter Partes Patent Reexamination a Chance to Work, 32 AIPLA

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Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 9 of 24

procedures are a recipe for disaster: “It would be legal malpractice to recommend a client
initiate an inter partes reexamination.”5 Others maintain that the recipe is superior: “[I]n view of
the many advantages of inter partes reexamination, it is not hard to envision it becoming the
dominant forum for patent validity disputes . . . .”6

Evaluations of inter partes reexam have been largely theoretical and based on the recipe

itself—the statute and regulations. But the proof of the pudding is in the eating.7 With the
advent of publicly available Image File Wrappers (“IFWs”), we can more readily taste the
pudding; we can see what’s actually happening in inter partes reexam, and how well it matches
up with the theory.

2

Key Features and Benchmarks of

Reexamination

I won’t review all the reexam statutes, rules, and procedures.8 But to understand the data

I’m presenting, you need a basic understanding of key features and benchmarks of inter partes
reexamination.

Q.J. 265 (2004); David L. Stewart, Inter Partes Reexam—On Steroids, 85 J. PAT. & TRADEMARK
OFF. SOC’Y 656 (2003); M. Patricia Thayer et al., Inter Partes Reexamination, PATENT WORLD
May 2001, at 1 (available at http://www.hewm.com/use/articles/interpartes.pdf); Robert T. Pous
& Charles L. Gholz, Will Inter Partes Reexamination Be Embraced by Third Parties as an
Alternative to Litigation?, INTELLECTUAL PROPERTY TODAY, vol. 7, no. 3, March 2000, at 37;
Frank A. DeLucia, Jr., Recent Developments in Inter Partes Reexamination Practice,
http://www.fitzpatrickcella.com/images/pub_attachment/attachment177.pdf; Richard L. Kaiser,
Inter Partes Reexamination as an Offensive Strategy for Invalidating Patents, http://www.mbf-
law.com/pubs/articles/1121.cfm; V. Bryan Medlock, Jr. & Russell Cass, Inter Partes
Reexamination, in 2000 Intellectual Property Owners Association Annual Meeting Speakers
Materials (2000); see also, e.g., 4 Donald S. Chisum, CHISUM ON PATENTS § 11.07[4][g]
(2004); Stephen G. Kunin & Anton W. Fetting, The Metamorphosis of Inter Partes
Reexamination, 19 BERKELEY TECH. L.J. 971 (2004); Paul Morgan & Bruce Stoner,
Reexamination vs. Litigation—Making Intelligent Decisions in Challenging Patent Validity, 86 J.
PAT. & TRADEMARK OFF. SOC’Y 441 (2004); Qin Shi, Reexamination, Opposition, or Litigation?
Legislative Efforts to Create a Post-Grant Patent Quality Control System, 31 AIPLA Q.J. 433
(2003).

5 Knowles et al., supra note 4, at 614, 627; see Kunin & Fetting, supra note 4, at 978;

Stewart, supra note 4, at 656.

6 Goldman & Choi, supra note 4, at 333.

7 Miguel de Cervantes Saavedra, DON QUIXOTE pt. ii, ch. xxiv, quoted in John Bartlett,

FAMILIAR QUOTATIONS (10th ed. 1919).

8 For the statute, rules, or procedures, go to the source: 35 U.S.C. §§ 311-18 (2002); 37
C.F.R. §§ 1.902-.997 (2004); MPEP chapter 26. For a summary, check the articles listed in note
4 above.

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Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 10 of 24

2.1 Key Features

2.1.1 Continuing Requester Participation

The identifying feature of inter partes reexamination is that it involves not merely the
patent owner and the PTO. In contrast to ex parte reexam, a third-party requester participates
throughout an inter partes case: the requester initiates the proceeding, the patent owner may
respond to any office action, and the requester may comment on any response by the owner.9 In
ex parte reexam, a non-owner ex parte requester’s participation ends before the first office
action.

2.1.2 Statutory Estoppel

Another key feature of the current inter partes procedure is estoppel. If the PTO orders

reexam and finally determines that a claim is valid, you can’t defend an infringement suit on that
claim on grounds that you could have raised in the reexam.10 Likewise, if there’s a final decision
against you (a) in civil litigation that you didn’t sustained your burden of proof on invalidity, or
(b) in inter partes reexamination that a claim is valid, you can’t request inter partes reexam
based on issues you could have raised in the earlier proceeding.11 I mention estoppel only
because the estoppel created in inter partes reexam may be the greatest deterrent to filing inter
partes requests.12 I have no data about estoppel.

2.2 Key Benchmarks

This article considers four benchmarks: Reexamination Order; First Action on the

Merits; Right of Appeal Notice; Reexamination Certificate.

9 35 U.S.C. § 314(b)(2).

10 See 35 U.S.C. § 315(c).

11 See 35 U.S.C. § 317(b).

12 See, e.g., Goldman & Choi, supra note 4, at 326-29; see also, e.g., USPTO, Round

Table Meeting: The Equities of Inter Partes Reexamination Proceedings (Feb. 17, 2004),
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/reexamproceed/round_tbl_
transcript.pdf (last visited Nov. 30, 2004) (“Inter Partes Round Table”), at 13 (“[B]ecause of the
estoppel that arises should the third-party requester lose, inter partes reexamination always puts
the requester at a significant legal disadvantage.”) (remarks of Michele Cimbala, Sterne, Kessler,
Goldstein & Fox); id. at 15-19 (remarks of Collin Webb, chair, ABA Subcommittee for Patent
Reexamination and Opposition).

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Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 11 of 24

2.2.1 Reexamination Order

Based on the request,13 an examiner decides whether to order reexamination and enters an
appropriate order.14 The test is whether the request (with any additional patents and publications
found by the examiner) raises “a substantial new question of patentability.”15

2.2.2 First Action on the Merits

The second significant benchmark is the first office action on the merits. Normally, the

PTO issues a nonfinal decision on the validity of every claim of the patent.16

2.2.3 Right of Appeal Notice

The case proceeds iteratively with owner comments and amendments, requester

comments,17 and subsequent office actions until the examiner decides to issue the inter partes
equivalent of a final action: an Action Closing Prosecution.18 The owner has one more chance
to comment and amend (and if the owner does so, the requester may comment).19 After
considering owner and requester comments on the Action Closing Prosecution, the examiner

13 The examiner may also perform a search and consider patents and publications that

were not part of the request. MPEP § 2644. This is supported by the statute, 35 U.S.C. § 312(a)
(“[T]he Director shall determine whether a substantial new question of patentability affecting
any claim of the patent concerned is raised by the request, with or without consideration of other
patents or printed publications.” (emphasis added)), but seemingly contradicted by the
regulations. See 37 C.F.R. § 1.923 (“[T]he examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any claim of the patent is
raised by the request and the prior art citation.” (emphasis added)).

14 See 35 U.S.C. § 312(a). The examiner normally uses form PTOL-2063, “Order

Granting/Denying Request for Inter Partes Reexamination.” See MPEP § 2646.

15 35 U.S.C. § 312(a).

16 Even if the request asks for reexamination of a limited number of claims, the PTO

reexamines every live claim. MPEP § 2658(IV)(B).

17 See 35 U.S.C. § 314(b); 37 C.F.R. §§ 1.945, 1.947.

18 See 37 C.F.R. § 1.949.

19 See 37 C.F.R. § 1.951.

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Case 1:07-cv-00844-GMS Document 14-2 Filed 06/30/2008 Page 12 of 24

normally issues a Right of Appeal Notice.20 This notice triggers the deadline to appeal to the
Board of Patent Appeals and Interferences (“BPAI”).21

2.2.4 Reexamination Certificate

At the end of the case—including any appeals—the PTO issues a Reexamination

Certificate.22 Obviously, there are proceedings between the Right of Appeal Notice (if any) and
the Reexamination Certificate. But I won’t discuss those proceedings, because there simply
aren’t enough appeals.

3

Theoretical Advantages

Inter partes reexamination has theoretical and/or perceived advantages (and

disadvantages) for the requester. Only a third party —and not the owner—may file an inter
partes request.23 Because only the third-party requester can act on these advantages, I’ll discuss
them only from the requester’s viewpoint.

3.1

Speed

One theoretical advantage is speed. The statute requires the PTO to enter a

Reexamination Order within three months after the request.24 This isn’t an advantage over ex
parte reexamination, which has the same statutory deadline.25 And, by itself, the speed of the
reexamination order offers little advantage over litigation; the test for ordering reexamination—
“a substantial new question of patentability”26—is so broad; a reexamination order by itself has
little substantive import.27

20 See 37 C.F.R. § 1.953(a). The examiner may instead choose to reopen prosecution.

See id.

21 See 37 C.F.R. § 1.953(c).

22 See 35 U.S.C. § 316; 37 C.F.R. § 1.997.

23 See 35 U.S.C. § 311(a) (“Any third-party requester at any time may file a request for

inter partes reexamination . . . .” (emphasis added)).

24 See 35 U.S.C. § 312(a); 37 C.F.R. § 1.923.

25 See 35 U.S.C. § 303(a).

26 35 U.S.C. § 312(a). The test for ex parte reexamination is identical. Compare id. with

35 U.S.C. § 303(a); see also MPEP § 2642(I).

27 See MPEP § 2642; see also, e.g., Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d

1575, 1584 (Fed. Cir. 1996) (“We take notice that the grant by the examiner of a request for
reexamination is not probative of unpatentability. The grant of a request for reexamination,
although surely evidence that the criterion for reexamination has been met (i.e., that a

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The statute allows the PTO to take an initial action on the merits—the second

benchmark—with the reexamination order.28 (This contrasts with ex parte reexamination, where
the owner may file a statement—and the requester may reply to the owner’s statement—after the
reexamination order and before the initial action on the merits.29) The inter partes regulations go
further; they say that an action on the merits will “usually” accompany a reexam order.30

The statute also says that inter partes reexamination—like ex parte reexamination—must

be conducted with “special dispatch.”31 Some people cite this as an advantage of inter partes
reexam.32 Neither the statute nor regulations define “special dispatch.”33 One notable feature of

‘substantial new question of patentability’ has been raised, 35 U.S.C. § 303), does not establish a
likelihood of patent invalidity.”).

28 35 U.S.C. § 313.

29 See 35 U.S.C. § 304; 37 C.F.R. §§ 1.525-.535 (2004); see also 37 C.F.R. § 1.939(b)
(“Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the
merits of the inter partes reexamination.”).

30 See 37 C.F.R. § 1.935 (“The order for inter partes reexamination will usually be

accompanied by the initial Office action on the merits of the reexamination.”).

31 See 35 U.S.C. § 314(c) (inter partes); 35 U.S.C. § 305 (ex parte).

32 See, e.g., Johnson, supra note 4, at 13:

Fast. The entire reexamination process is expedited and treated with “Special
Dispatch”: two months for the examiner to decide whether to proceed (one month
if in litigation), two months for the Patentee to respond, and 30 days for Requester
rebuttal comments. There are no extensions of time other than for “sufficient
cause” and these are by no means automatically granted.

33 But cf. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988):

“Special dispatch” is not defined in the statute. . . . According to

Webster’s New World Dictionary, special means distinctive, unique, exceptional,
or extraordinary, and dispatch means to finish quickly or promptly.
Consequently, the ordinary, contemporary, and common meaning of special
dispatch envisions some type of unique, extraordinary, or accelerated movement.
In fact, the PTO itself has interpreted special dispatch to require that
“reexamination proceedings will be ‘special’ throughout their pendency” in the
office, and provides for an accelerated schedule. MPEP § 2261. Whatever else
special dispatch means, it does not admit of an indefinite suspension of
reexamination proceedings pending conclusion of litigation.

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“special dispatch” is limits on extensions for the parties: the owner may get a time extension
only for good cause shown,34 and the requester cannot get an extension.35

3.2

Cost

Another cited advantage of inter partes reexamination over litigation is cost. One

estimate is “less than $50,000 before experts in the technology and the law” and “3-10 percent of
what a judicial proceeding costs.”36

3.3

Greater Likelihood of Favorable Result for Requester

The most important advantage of inter partes reexam would be a better outcome than in
other proceedings. I haven’t found an author who explicitly says that you’re more likely to get
better results in inter partes reexam. But this is implicit in articles that recommend the
procedure.37

4

What’s Actually Happening?

The PTO recently made IFWs available on the Internet.38 Although publicly available

IFWs are far from perfect,39 they are a relatively easy way to see the details of inter partes

34 37 C.F.R. § 1.956.

35 The requester’s deadlines are fixed by statute. 35 U.S.C. § 314(b)(3); see MPEP

§ 2647.01 (“Extensions of time are not available for third party requester comments, because a
comment period of 30 days from service of patent owner’s response is set by statute.”).

36 Johnson, supra note 4, at 14.

37 E.g., Goldman & Choi, supra note 4, at 323-24 (“By removing the participation hurdle,

inter partes reexamination is not merely a proceeding that is neutral to the parties, but rather it
may decidedly benefit the patent challenger.”).

38 IFWs became available via Public PAIR around August 1, 2004. See, e.g., USPTO

Press Release No. 04-13, “Internet Access to Patent Application Files Now Available” (Aug. 2,
2004), http://www.uspto.gov/web/offices/com/speeches/04-13.htm.

39 The IFWs suffer from a host of problems including: documents not yet scanned,

missing documents, double scanning, and incorrect indexing. See also Inter Partes Round Table,
supra note 12, at 55 (“[A]s they get scanned in, the lowest GS-minus whatever level is scanning
them in, and the papers get lost and skewed and filed. We can check on the [PAIR] sites and
find cases which are every which way but loose with half the papers filed in the last year not
there, and no response in over a year on some of the most important reexams that we’ve seen.”)
(remarks of Harold C. Wegner, Foley & Lardner).

For a longer review of some problems with IFWs, see the article in the November 2004

newsletter of the PTO professional employees’ union, “POPA Proposes Much-Needed IFW

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reexams.40 The data in this article are based on my review of IFWs available in Public PAIR
through July 1, 2005.

I have been reviewing all available IFWs for inter partes cases. I generally look at each

filing in the Public PAIR IFW41 and at the original patent claims. I note (among other things):
the claims for which reexam was requested, how long it took to issue the reexam order, whether
the PTO issued an action on the merits with the reexam order, how the examiner ruled on the
claims, and how far the case progressed. I also reviewed the PAIR “Transaction History.” If
there is a concurrent PTO proceeding (such as an ex parte request), I look at any available IFW
for the concurrent proceeding. If there is concurrent litigation, I at least look at the electronic
docket for that litigation.

Here’s what I have found, based on the 100 inter partes requests filed so far:

4.1

Speed

Inter partes reexamination generally moves quickly to the earliest benchmarks—the
Reexamination Order and the First Office Action. But later activity can be relatively slow.

4.1.1 Reexamination Order

So far, the PTO has been timely in meeting the three-month statutory deadline for the
Reexamination Order.42 Of the 100 requests filed so far, 85 are older than three months. In 2
cases, the PTO vacated the proceeding for procedural reasons before deciding whether to allow
reexamination.43 In the remaining 83, the PTO entered a Reexamination Order in a timely
fashion. It typically takes about 80 days from request to the Reexamination Order.

Changes,” POPA Newsletter, Nov. 2004, Vol. 4, No. 7, available at
http://www.popa.org/newsletters/nov04.shtml.

40 Before the PTO made IFWs publicly available, you could track the details of PTO

proceedings only by ordering the file wrappers from the PTO or another source. You also could
easily track the contents of a wrapper via the PAIR “Transaction History”. See, e.g., Johnson,
supra note 4, at 13 (listing status of 20 reexams). But the contents often reveal next to nothing.
For instance, the fact that there’s an office action doesn’t reveal whether the claims were rejected
or confirmed. See id.

41 Some papers in the IFW are not available via Public PAIR.

42 There’s one possible exception. The request in 95/000,067 was filed December 20,

2004, making the Reexamination Order due March 20, 2005 – a Sunday. The Public PAIR
Transition History page shows the Order mailing date as Monday, March 21. But the Order
itself, as well as the Public PAIR Image File Wrapper Page, show the mailing date as Tuesday,
March 22. The MPEP says that when the 3-month period ends on a weekend or holiday, the
order “must be mailed by the preceding business day.” MPEP § 2641 (emphasis in original).

43 In 95/000,011, the request was incomplete. In 95/000,019, the requester was estopped.

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time to reexam order
mean
median
maximum
minimum

days
76
79
92
43

4.1.2 First Action on the Merits

The PTO has made good on its intent that an action on the merits “usually” accompany

the Reexamination Order. Indeed, of the 86 orders granting reexamination, 67 have been
accompanied by an Action on the Merits. In the remaining 19 cases, the Action on the Merits
followed soon after the Reexamination Order, or there’s usually an obvious (and good) reason
why there was no simultaneous Action on the Merits.44

Getting a ruling on the merits – even an interim one – within three months is an

advantage of inter partes reexam. In contrast, after an ex parte reexam order the PTO must wait
for (1) any owner’s statement on the reexam order, and (2) any response to such a statement from
the third-party requester. Only then does the examiner rule on patentability.

The first inter partes office action does not merely give a ruling; it gives a reasoned

response to each of the requester’s invalidity arguments, and a reason for any new grounds of
rejection.45 So far, the Office Actions on the merits have been long, thorough documents – much

44 Here are some examples:

In 95/000,005, when the PTO ordered inter partes reexamination, there was a pending ex

parte request (filed by a different third-party requester) awaiting an owner’s statement and
requester’s response.

In 95/000,020, there is a pending Director-ordered ex parte reexamination. The PTO
decided to merge the proceedings. Furthermore, the patent in reexamination has 665 claims.

In 95/000,025, a reissue application was pending when reexamination was ordered.

Instead of wasting time ruling on the merits of the original patent, the PTO ordered the reexam to
proceed on the basis of the reissued claims.

In 95/000,031, the PTO said that the originally filed request papers lacked a detailed

explanation why some of the claims were invalid. The requester filed additional papers, and the
PTO entered an action on the merits less than two months after the reexam order.

In 95/000,053, when the PTO ordered inter partes reexamination, there was a pending ex

parte request (filed by the owner) awaiting an owner’s statement and requester’s response.

45 See MPEP § 2660(III).

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longer than the samples in the MPEP.46 You’re unlikely to convince the examiner to change his
mind about these decisions.

No patent owner has yet succeeded in changing an examiner’s mind about a rejection.47

Thus, in all the other inter partes with a second office action, the examiner has not had a change
of heart from the position taken in the first action. Thus the first action on the merits is a guide
to the viability of the original claims. It therefore also is a speedy and excellent predictor
whether the requester will have mandatory intervening rights.

4.1.3 Later Benchmarks

In the 86 cases in which it ordered inter partes reexamination, the PTO has issued only
17 Actions Closing Prosecution which were not withdrawn and 3 Right of Appeal Notices. The
parties have appealed only 2 case to the BPAI, which hasn’t ruled on either appeal. The PTO has
issued only 2 Reexamination Certificates; in those cases there was no appeal to the BPAI. No
case has made it as far as the Federal Circuit.

From this data, it’s apparent that inter partes cases move more slowly after the initial

office action, and that it may take years for the examiner to issue a final order.48 The time to a
final order is longer than in ex parte reexamination.49 Indeed, in the time that the PTO (i.e., both
the examiner and BPAI) takes to reach a result on an inter partes reexamination, some courts
could reach a judgment on the merits.50

4.2

Cost

The IFWs say nothing explicit about costs. Inter partes reexam is doubtless less

expensive than litigation. One author says:

46 See MPEP § 2660(IV).

47 In 95/000,003, the examiner changed her mind in favor of the requester. The initial
Office Action confirmed 23 claims. But a later Office Action rejected all live claims, including
all the ones previously confirmed. This is the only examiner change of position I’ve noticed.

48 USPTO Director Jon Dudas recently laid out a plan for speeding up both ex parte and
inter partes reexamination. This plan includes establishing “firm processing time periods for all
reexamination proceedings ordered (after the Office order for reexamination) on or after October
1, 2005, for both ex parte and inter partes reexamination proceedings.” Statement Of Jon W.
Dudas Before The Subcommittee On Intellectual Property Committee On The Judiciary United
States Senate, at 7 (Apr. 21, 2005) (available as http://www.uspto.gov/web/offices/com/speeches
/2005apr21.pdf; last visited June 14, 2005).

49 The average pendency of ex parte reexams (filing date to reexamination certificate) is
21.6 months and the median is 16.9 months. USPTO, “Ex Parte Reexamination Filing Data –
March 31, 2005” ¶ 7.

50 Of course, there won’t be an appeal in every appealable reexam.

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Inter partes reexamination through the USPTO can address the issue of
patentability, including the enhanced filing fee, for less than $50,000 before
experts in the technology and the law. The 2001 AIPLA survey notes a median
cost of patent infringement litigation in Texas to be $500,000 (less than $1 million
at risk) and $1.5 million ($1-$25 million at risk). Inter partes reexamination costs
3-10 percent of what a judicial proceeding costs.[51]

Because that author prosecuted an inter partes reexamination to completion,52 his

comments are a good starting point for a cost estimate. In that reexam, the Request for
Reexamination was only five pages long and included neither claim charts nor expert
declarations. The patent owner disclaimed half of the patent before the reexamination order was
entered.53 The owner also abandoned its efforts after the second office action54 (and, obviously,
there was no appeal to the BPAI). So if the $50,000 estimate is based on the fees in this reexam,
consider increasing the upper end of an estimate to account for a longer, more involved
proceeding; a less compromising opponent; a more complex patent; a more important patent;

51 Johnson, supra note 4, at 14.

52 95/000,001.

53 The patent had 39 claims. The owner disclaimed 17 of them after the request was filed

but before the PTO ordered reexamination.

54 The second office action rejected amended claims filed by the owner. The owner

didn’t respond.

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etc.55 For instance, another lawyer suggests that at least $150,000 to $200,000 is a reasonable
cost for a major reexam of a “company-buster” patent.56

Consider, for instance, the inter partes request in 95/000,053. This request is 79 pages
long and cites 121 prior art references. The requester is a defendant in infringement litigation
and also filed two other inter partes requests of similar complexity for two related patents.57
And there are pending ex parte reexaminations filed by the owner.58

4.3

Results

There are at least preliminary results on validity in at least 83 inter partes cases. We can

review those actual results. We can also compare them to historical ex parte data to get some
feeling for which procedure works better for the requester.59

55 Also note that a different (and probably earlier) version of Mr. Johnson’s article uses
slightly different language to discuss costs. See Lance G. Johnson, United States: Inter Partes
Reexamination: The USPTO Alternative to Patent Litigation (Sept. 30, 2003), at
http://www.mondaq.com/article.asp?article_id=22747 (last accessed Nov. 30, 2004); see also
Lance G. Johnson, Reexamination as a Limited Alternative to Litigation, IP LITIGATOR Jan./Feb.
2005 at 19, for the latest version of this article.

Here is a marked-up comparison showing the differences between the first and second

versions of this article:

Inter partes reexamination through the USPTO can address the issue of
patentability, including the enhanced filing fee, [should cost no more than] for
less than $50,000 before experts in technology and the law. The 2001 AIPLA
survey notes a median cost of patent infringement litigation in Texas to be
[between $502,000] $500,000 (less than $1 million at risk) and [$3.495 million
(more than $25 million at risk)] $1.5 million ($1-$25 million at risk). Inter partes
reexamination costs [much less than a judicial proceeding] 3-10 percent of what a
judicial proceeding costs.

56 Inter Partes Round Table, supra note 12, at 95 (“[W]e did a major ex parte

reexamination for a client a couple of years ago, and this brings me to comment on how
authoritative your prior art search would have to be. When an opposing patent is potentially a
company buster, you have to go all out, and $150,000 to $200,000 of expense for an ex parte or
inter partes reexamination is—it makes people wince, but it’s not a company buster.”) (remarks
of Frederick C. Williams, Burns & Levinson).

57 95/000,057 and 95/000,058.

58 90/007,169, 90/007,170, and 90/007,171.

59 There are weaknesses in these comparisons, including: the inter partes data is interim,
whereas the ex parte data is final; the ex parte data is older than the inter partes data; the number
of inter partes cases is orders of magnitude smaller than the number of ex parte cases; a

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How many requests are denied? From the start of ex parte reexam through March 2005,
the PTO denied 9% of ex parte requests.60 In recent years the denial rate has been lower. More
recently, the PTO rejected about 4% of ex parte requests.61 The reason for rejection typically is
lack of a substantial question of patentability.

So far, the inter partes Reexamination Orders have found a substantial new question of

patentability and ordered reexamination in all but 2 cases.62 In those cases, the examiner did not
compare the patent to the references.63 The numbers look like this:

Total Reexam Orders
Orders Granting Reexam
Orders Denying Reexam

88 100%
98%
86
2
2%

What happens on the merits? In inter partes proceedings in which there’s been an action

on the merits, the PTO has allowed all the claims in 1 case – 2% of the cases in which it has
issued an office action. The PTO has so far rejected all claims in 71% of the cases in which
there’s been an office action. In the remaining 29% of inter partes cases, there have been some
claim changes–either new or amended claims. This table shows this data and compares it to ex
parte data:64

all claims confirmed
all claims rejected / cancelled
some claim changes

inter partes
(interim)
1%
71%
28%

ex parte
(certificate)
26%
10%
64%

substantial number of ex parte requests are filed by owners; and each case is different, so
comparing numbers may not be valid.

60 See, USPTO, “Ex Parte Reexamination Filing Data – March 31, 2005” ¶ 5.b; see also,

e.g., FY 1999 USPTO ANNUAL REPORT (“CENTURY OF AMERICAN INNOVATION”), Table 13;

61 See USPTO, 2003 PERFORMANCE AND ACCOUNTABILITY REPORT 119 Table 13A

(about 4% of ex parte requests denied). This data covers FY1999 to FY2003. In earlier years,
the PTO denied 5-10% of ex parte requests.

62 The PTO also vacated two inter partes requests for procedural reasons. See note 43

above.

63 The cases denying reexam were companion cases, 95/000,082 and 95/000,08. The

same requester asked for reexamination of two closely related patents of the same inventor. The
same examiner ruled that the requester’s references were not prior art.

64 The inter partes data is from the 76 cases with an action on the merits. The ex parte

data is for issued reexamination certificates and is from USPTO, “Ex Parte Reexamination Filing
Data – March 31, 2005” ¶ 8.

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Based on the first two rows, inter partes reexamination is, in fact, much more favorable to the
third-party requester.

The information in the last row is almost useless. When the Reexamination Certificate

includes some claims, the critical questions are whether (1) the issued claims cover the
requester’s product(s), and (2) the requester acquired intervening rights.65 This depends on
which claims issue. If the PTO confirms any claim (including a new or amended claim) that
covers the requester’s product, the requester’s future path may be cut off. On the other hand, if
the PTO cancels all original claims covering the requester’s product, the requester will avoid
back damages.

There’s no easy way to compare all confirmed claims to the requester’s product(s).

Indeed, the IFW rarely reveals the requester’s products. But we can make an educated guess
about intervening rights: if the PTO rejects all the claims for which reexam was requested, then
the requester will get intervening rights. The next table shows what is happening to the claims
for which inter partes reexam was requested (“requested claims”). Unfortunately, nobody has
yet compiled similar data for ex parte cases:

some requested claims confirmed
all requested claims rejected

inter partes
(interim)

16%
84%

So inter partes requesters likely have gained at least intervening rights at least 84% of the
time. It’s hard to tell anything about most of the remaining cases—the requester may have asked
for reexam of more claims than needed to obtain intervening rights.66

4.4

Popularity

I’ve seen contrasting statements about the actual or projected popularity of inter partes

reexam—for instance, on the one hand that it will be “dominant”67 or, on the other that it’s
hundreds of times less popular than ex parte reexamination.68 At this moment, the truth is in
between.

65 Also in some cases, the requester could theoretically convince a court to grant

equitable intervening rights. See 35 U.S.C. §§ 307(b), 252 (1999).

66 But we can certainly say that the requester is striking out in the one case in which all

claims were confirmed, 95/000,009. This is one of the cases now before the BPAI.

67 Goldman & Choi, supra note 4, at 333 (“[I]n view of the many advantages of inter

partes reexamination, it is not hard to envision it becoming the dominant forum for patent
validity disputes . . . .”).

68 See Knowles et al., supra note 4, at 614 (“In the years following its inception, less than
forty only three [sic] requests for inter partes reexaminations were have been filed, as compared
to hundreds of requests for ex parte reexaminations received each year.”).

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Only 100 inter partes requests have been filed in the four years from the first request. So

inter partes reexam isn’t dominant.

Ex parte requests do outnumber inter partes requests by one to two orders of magnitude

(something like 15:1). But don’t make the mistake of concluding that third parties choose ex
parte reexam by a similar ratio. Inter partes reexam is not an option for most requesters: (1)
many ex parte requesters are patent owners69 (inter partes reexam is not an option for owners),
and (2) so far, the vast majority of patents in ex parte requests issued from applications filed
before November 29, 1999, so inter partes reexam is not an option for those requesters.70

It would be more useful to know how often requesters pick inter partes reexamination

when they actually have a choice. To get a handle on this, I looked at the ex parte requests in the
Electronic Official Gazettes from July 6 though November 30, 2004. These Gazettes covered
requests filed May 21 through October 21, 2004. I identified and counted the requests that were
eligible to be filed inter partes—i.e., the requests filed by third parties on patents that issued
from applications filed on or after November 29, 1999. Here’s what I found, and how it
compares to inter partes requests filed in the same period:

May 21 – Oct. 21, 2004
requests filed
% of requests filed
inter partes eligible requests filed
% of inter partes eligible requests

total
ex parte inter partes
14
224
6% 100%
14
47
30% 100%

210
94%
33
70%

So if this data is a fair sample, requesters who have a choice currently choose ex parte over inter
partes reexam by a ratio of 2.3:1. Ex parte is still the procedure of choice, but not by an order of
magnitude. Also, the pace of inter partes requests is gradually increasing, as shown by this
table:

69 From the inception of reexam through FY2003, patent owners filed 43% of ex parte
requests. See USPTO, “Reexamination Filing Data—September 30, 1995” at 1, ¶ 1 (data from
inception through FY1995); USPTO, 1998 Annual Report, Table 13 (FY1996-FY1998);
USPTO, 2003 PERFORMANCE AND ACCOUNTABILITY REPORT, 119, Table 13A (1999-2003).

70 See Inter Partes Round Table, supra note 12, at 92-93 (“I did a really back-of-the-

envelope calculation of how many patents are subject to inter partes reexamination in
comparison to how many patents are actually in force at the current time, with some very gross
assumptions, and I came out with a figure like 6.25 percent. This leads to a ratio of patents
available for [inter partes] reexamination to patents in force of something like a factor of 16. If
you look at the numbers cited in the notes that were handed out to us, the ratio between ex parte
reexamination requests during the time period cited and inter partes reexamination requests
during the same time period is approximately 9 or 10 to one.”) (remarks of Frederick C.
Williams, Burns & Levinson).

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period
07/01/01-06/30/02
07/01/02-06/30/03
07/01/03-06/30/04
07/01/04-06/30/05

new inter
partes requests

4
18
26
52

5

Conclusions

Review of the records in inter partes reexaminations shows that within three months, the
PTO will actually rule on the reexamination request and – in almost all cases – issue an action on
the merits. After the first office action, no patent owner has yet convinced an examiner to
change his mind about how prior art applies to the original claims. After the first office action,
the case likely will proceed more slowly than an ex parte reexam, and possibly as slow as
infringement litigation in faster districts. Thus inter partes reexam is best suited (compared to
litigation and to ex parte reexam) to requesters who need a fast interim result and are willing to
live with lack of finality for years.

So far, requesters have achieved good results in inter partes reexamination. Even given

the difficulty of comparing interim inter partes results to old, final ex parte data, third-party
requesters are doing significantly better in inter partes cases than in ex parte cases. Inter partes
requesters likely will gain mandatory intervening rights in about three-quarters of the cases.
Thus third parties who decide to seek reexamination are significantly more likely to do better by
filing inter partes as opposed to ex parte.

6

Data

Based on IFWs available through PAIR as of July 1, 2005.

Filed inter partes requests
Number of requests at least 3 months old
Number of proceedings vacated prior to reexam order
Number of requests at least 3 months old, not vacated
Reexamination Orders
Reexam Orders within 3 months of filing date
Mean days to Reexamination Order
Median days to Reexamination Order
Minimum days to Reexamination Order
Maximum days to Reexamination Order
Orders Denying Reexamination
Orders Granting Reexamination
Reexam Orders accompanied by action on the merits
Reexam Orders not accompanied by action on merits
Cases with at least one action on merits
Cases with Action Closing Prosecution
Right of Appeal Notices

100
85
2
83
88
88
76
79
43
92
2
86
67
19
76
17
3

2% of requests

2% of reexam orders
98% of reexam orders
78% of orders granting reexam
12% of orders granting reexam

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Appeals to BPAI
BPAI decisions
Appeals to Federal Circuit
Reexamination Certificates
Cases rejecting (so far) all claims
Cases rejecting (so far) all original claims
Cases rejecting (so far) all claims for which reexam
was requested
Cases allowing (so far) at least some claims for which
reexam was requested
Cases allowing (so far) some claims
Cases allowing (so far) all claims
Cases allowing (so far) some or all claims

2
0
0
2
54
55
64

12

21
1
22

71% of cases with actions
72% of cases with actions
84% of cases with actions

16% of cases with actions

28% of cases with actions
1% of cases with actions
29% of cases with actions

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