Patent prosecution history has always been a part of patent litigation, to some extent.  However, a recent ruling from the Southern District Court of New York has added a new twist to how and when the court will consider the prosecution history of an application in terms of litigation.  On a renewed motion to stay litigation for a pending inter partes reexamination in Baseball Quick, LLC. V. MLB Advanced Media L.P., et al., the court decided for a second time not to stay the case pending a resolution from the USPTO.  Previously the court based its decision not to stay in this case in part due to the delay required by a reexamination.  Now, however, the court based its decision on the implication that, since the USPTO rejected the claims as obvious twice during prosecution on several independent grounds, it is unlikely that the USPTO will eventually uphold the patent.

In deciding to grant a stay of litigation for a reexamination, which can take three years with an additional three-year appeal process, the court weighs three factors: (1) the harm to the non-moving party, (2) whether the stay will simplify the issues in the case, and (3) whether discovery is complete.  In the first decision not to stay in Baseball Quick, the court determined that waiting for a reexamination would require a six-year delay, a significant harm to the plaintiff.  The court also found that its ruling could be determinative without the reexamination results because the defenses in the litigation went beyond the scope of the reexamination.  Additionally, since the litigation was only concerned with monetary damages rather than an injunction, the court noted that its ruling could be vacated in light of a contradictory USPTO ruling.

In response to a renewed motion by the defendant again requesting a stay pending reexamination, the court changed its reasoning.  The main factor for a rejection of the renewed motion to stay, the court noted, was that the USPTO had rejected all the claims in the application as obvious twice.  Additionally, the court noted that the examiner handling the application has 12 years of experience, has handled inter partes reexaminations previously, and has never been reversed on appeal.

This decision basis should strike fear into the hearts of patent prosecutors everywhere.  Rejections based on obviousness are common to patent prosecutors, and it is often normal to have several different bases for these rejections throughout the prosecution process.  The only way to defend against a similar ruling in future cases would be for prosecutors to strive for more compact prosecutions: fewer office actions between filing and allowance.  LexisNexis® PatentAdvisor℠ is a relatively new tool available to help with the compaction process: it offers examiner and art unit reports to better understand likely pathways.  Further functionality, such as the ability to predict the most likely path to issuance and to monitor an entire portfolio for multiple repeated rejections, is currently in the pipeline.

The PatentAdvisor Examiner Reports also provide important insights to litigators arguing for or against a stay pending reexamination.  An Examiner Report will give all the necessary information that a judge will use to make a decision – the examiner’s average time to handle a reexamination, their success on appeal, and statistics about their average prosecution history.

The best way to preempt such a ruling in patent litigation is to push for compact patent prosecution.  However, once faced with litigation, the best course of action involves having the best information available.  PatentAdvisor presents tools not available anywhere else to analyze a given patent application and ensure the most compact prosecution, saving clients’ money, shortening prosecution time, and now, handling validity arguments in later litigation.

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