Remind Me: Why Do We Let Patent Lawsuits Go On Even As USPTO Has Doubts About The Patents?

from the shouldn't-things-wait? dept

While plenty of people are familiar with the fact that NTP got $612.5 million from RIM in a patent dispute a few years back (which drew tremendous scrutiny into the realm of patents), one of the most interesting details that many people didn’t follow was that at the same time as the lawsuit was going on, the US Patent Office was re-examining those same patents, and issuing rejections of the very same patents. Despite the USPTO even rushing to announce its problems with the patents way ahead of schedule, the judge chose not to wait for the final rejections and pressured RIM into paying up.

This sort of thing happens all the time.

For example, just weeks after TiVo was practically dancing in the streets over its latest wins over EchoStar in a patent dispute over basic DVR functionality, the USPTO has given an initial rejection on some of the claims at issue in the case. While TiVo is quick to downplay this as just the first step in a long process (which it gets to respond to), it’s being a bit misleading in suggesting that this sort of thing happens all the time. Sure — it happens a lot, but to questionable patents. It seems that, if the USPTO has agreed to review a patent and clearly the examiners have serous questions about the patentability of certain claims, shouldn’t any lawsuits that hinge on those patents be put on hold?

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Companies: echostar, tivo

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Comments on “Remind Me: Why Do We Let Patent Lawsuits Go On Even As USPTO Has Doubts About The Patents?”

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Anonymous Coward says:

Assuming the patent system has a purpose (which I sincerely doubt), what companies always say is that other people using their patent are damaging them economically. If this is right, and it is now, it really doesn’t make sense to wait for a patent to be fully reviewed before finishing a trial over it. You say that disputed patents are fairly uncommon, so it makes sense to assume that since the patent was granted in the first place, it should be valid. If the issue is really time sensitive (which again, I doubt), then the cost of opportunity may be lost to the patent holder by waiting out.

Anonymous Coward says:

Re: Re: Re: Re:

It’s also kind of the DMCA takedown problem (but reversed). DMCA assumes content is infringing until proven not infringing. And if the content is time sensitive, then it’s value may be lost because of the DMCA, even if the content was not infringing. Here, patents are assumed to be good and time sensitive (or else, I don’t see how they can be “damaging” anyone) and hence enforced until not enforceable. And once again, I think the whole patent system is useless, not needed and shouldn’t exist. But in the current system, patents should be valid until proven not valid. If that’s not the case, we have a new “infringing (invalid)” until proven “not infringing (valid)”, which I think is wrong in both cases.

beaker1991 says:


I understand ACs argument that while a patent is considered valid. Then the patent holder should be allowed to seek compensation (even if the patent is under review). But I have the following questions. If a patent trial occurs and has completed with judgment against the infringer and the patent(s) involved are later (even years later) proven not valid, should the judgment (the money the infringer had to pay) be returned to the infringer? Also, if a trial is ongoing and a patent involved is found not valid, should this fact not be entered immediately into the trial?

jakerome (profile) says:

The system sort of sucks, no doubt, but this is at least the 2nd time that Echostar has asked for a reexamination. The last time, the patent was upheld.

Without defending the patent process in general, I think it’s important to realize that at every step of the process, Echostar has sought to delay the proceedings and extend the trial. Every court ruling has been in TiVo’s favor, yet 5 years on Echostar still continues as if TiVo never filed a lawsuit. Now, if this was the first re-examination and was filed promptly when the lawsuit was begun, they would have a stronger case. But filing for a patent reexamination 5 years after being sued looks like yet another delaying tactic. Wash, rinse, repeat.

staff1 (profile) says:

a shilling we will go

“Why Do We Let Patent Lawsuits Go On Even As USPTO Has Doubts About The Patents?”

The PTO grants over 90% of reexam requests within 3 days of submission which is hardly enough time to make a determination of whether or not there is a “substantial new question of patentability” as required by law. The courts are savvy enough to see that the PTO has become a rubber stamp for large corporate infringers (your buddies who pay you to write this BS) and are no longer willing to permit this shell game your buddies like to play so they can steal the creations of small entities.

Patent reform is a fraud on America…
Please see for a different/opposing view on patent reform.

vic kley says:

Remind Me

Stand reminded Mike!

The USPTO is composed of individuals of varying competency – you yourself have complained about their foolish approval of “obvious” inventions. Their reviews are frequently flawed and it could be years before such things are resolved. Thus the courts wisely ignore unfinished PTO actions.

You can’t have it both ways!

Mike Masnick (profile) says:

Re: Remind Me

The USPTO is composed of individuals of varying competency – you yourself have complained about their foolish approval of “obvious” inventions. Their reviews are frequently flawed and it could be years before such things are resolved. Thus the courts wisely ignore unfinished PTO actions.

And yet it’s okay to trust their initial decisions, despite the fact that they’re done with significantly less oversight?

Yeah, that makes sense…

Ronald J Riley (profile) says:

East Texas Court Is FAIR

patent pirating companies, the kind of companies who are TechDIRT’s clients, count on being able to abuse the process of law to bankrupt their victims.

The reason inventors and big companies alike flock to the court is that they do not tolerate the kinds of abuse of the legal system which is the hallmark of the way members of the Coalition for Patent Fairness (aka. the Piracy Coalition)conduct themselves.

Every crook thinks that those who hold them accountable are are nasty but in the end the only ones who are nasty are the thieves.

There would be no need for litigators or courts for patent cases if not for big corporate patent pirates.

Ronald J. Riley,

Speaking only on my own behalf.
President – – RJR at
Executive Director – – RJR at
Senior Fellow –
President – Alliance for American Innovation
Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
Washington, DC
Direct (810) 597-0194 – (202) 318-1595 – 9 am to 8 pm EST.

MikeIP says:

Agree with you here

The defendant can petition for a stay of proceedings during a reexam, but the court is not obligated to grant the petition. I think that’s dumb. Better to finish the reexam, which may force the claims to be narrowed. Then continue with Markman hearings and so on based on the new claims. If the PTO rejects all claims and that decision is upheld, then charge the patent holder to pay attorneys’ fees to the defendant.

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