NTP Trying To Drag Out The Patent Rejection Process? Wonder Why...

from the hmm dept

Last week the US Patent Office took the surprising step of reaching out and calling both RIM and NTP to let them know that it's very, very likely to reject all of NTP's patents at the heart of the excruciatingly long patent battle with RIM. This was extremely important because the judge in the patent lawsuit had said that he wouldn't wait for the Patent Office's ruling, mainly because he was sick of dealing with the case (who knew that impatience was a reasonable reason for ignoring important evidence and pushing a billion dollar fine?). So, now, the two parallel timelines become much more important. The companies are supposed to file documents with the court by February 1, 2006 -- and the judge is expected to rule soon afterwards. As for the patent review process, NTP was supposed to get its response in by the end of this month, but has managed to squeeze out a 30-day extension meaning it won't have to file the response until the nearly the same date as when the judge will make his decision. While NTP denies it's dragging out the process, it's clearly in the company's interest to do so. Still, we wonder how the judge can, in good conscience, still move forward with the case when the Patent Office has clearly stated that it believes it made a huge mistake in originally granting these patents. Meanwhile, it still seems like a reasonable question as to whether RIM can sue the Patent Office for its admitted negligence in issuing these patents (though, of course, they might want to wait until the patents are really rejected).

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  1. identicon
    patentman, 30 Dec 2005 @ 7:38am

    Re: ridiculous

    1) I am not a lawyer. I am a law student who happens to work in a patent law firm. As for my spelling errors, my billing rate is 220/hour. Hence, I'm not going to spell check everything I type in response to ignorant internet posts.

    2) Read my post again, I provided details regarding the relavent patent law that is applicable to the issue at hand.

    3) The PTO can make two types of inquiries into issued patents. Specifically, patents can be re-examined at any time (upon petition by the patentee or a third party) or they can be subject to reissue (within 2 years oif their issuance) upon the petition of the patentee.

    4) The PTO does not "back" anyone. It is an independent governmental entity. It examines patent applications, issues patents, occasionally revisits issued patents (as in this case), and engages in rulemaking, thats it.

    5) Re: the rejection of "all" of the pending claims. Without reading the rejection, all you can interpret from this statement is that the independent claims are rejected. At the PTO, all of the claims are rejected if they are dependent from a rejected base claim. Thus, dependent claims could still be allowable if re-written in independent form.

    5) Re: your comments as to suing the PTO: Quite often judges do suspend litigation until the PTO has re-examined or reissued an application. Dismissing the case without prejudice would actually be more economically wasteful then maintaining the pendency of the case because it prevents the lawyers from having to do the same work twice. If the case is dismissed, the complaint would have to be re-filed, notice again served on the Defendant, briefs would have to be refiled, the litigation schedule would have be completely redone. All this takes a LOT of time, even though it may simply involve resubmiting previously generated documents.

    Also, the judge will take into consideration the PTO's determination, but that determination is only persuasive, it is not conclusory evidence that precludes the judge from exercising his own judgement. The presumption of validity given to all issued patents is simply strengthened or weakened depending on the PTO's determination during the re-exam/re-issue process.

    As for your comment questioning whether the PTO is an "industry expert," have you ever read a patent application? If you have, you know that the vast majority of patent applications are highly technical documents. The Examiners who examine these applications usually have a background in the technology with which the application is concerned. Of all the Judges on the Federal Circuit, I know of ONE that has a technical degree (A BS in chemistry I believe). All of the other judges have some other non-technical degree. Who then do you think will have a better understanding of the technology in a patent application, the Examiner or a judge?

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