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

Thu, Aug 6th 2009 6:28pm — Mike Masnick

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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Filed Under: lawsuits, patents, review, uspto
Companies: echostar, tivo

22 Comments

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Anonymous Coward, 6 Aug 2009 @ 7:13pm

As best I can determine the USPTO has rejected independent Claims 31 and 61 as being obvious in view of newly cited art. Of course, Claims 1-30, and 32-60 remain in force.
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Anonymous Coward, 6 Aug 2009 @ 7:17pm

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.
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..., 6 Aug 2009 @ 7:25pm

Re:
What you typed makes no sense.
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Anonymous Coward, 6 Aug 2009 @ 7:26pm

3 words
separation of powers.
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Anonymous Coward, 6 Aug 2009 @ 7:46pm

Re: Re:
What part didn't? I'm simply assuming that the system works and patents are good until proven not good. And that infringing is "harmful" (in a timely manner), which is supposed to be the point of the system.
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Anonymous Coward, 6 Aug 2009 @ 8:12pm

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.
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Anonymous Coward, 6 Aug 2009 @ 8:26pm

The problem is until they are official declared void, they are in force. The courts cannot easily put off justice waiting for the patent office to undo itself.

Good lawyers could vamp for a while, months, maybe a couple of years. But these things can take a long time to turn around.
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HolaJohnny (profile), 6 Aug 2009 @ 9:03pm

So assuming...
They award damages on a patent while its under review. Then when the patent is deemed invalid they will pay back said "damages" with interest since they weren't due in the first place? Or are you encouraging entities to rush through patents to get a "I did it first!" prize even if its bullshit?
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HolaJohnny (profile), 6 Aug 2009 @ 9:06pm

Jesus!
Mike you must have some kind of following! In the time it took to write my post 2 other posts appeared as I submitted that I would have liked to build off...
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beaker1991, 6 Aug 2009 @ 9:21pm

?
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?
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Anonymous Coward, 6 Aug 2009 @ 9:43pm

Re: Re: Re: Re:
Sucks how that whole due process part of the constitution gets forgotten.
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jakerome (profile), 6 Aug 2009 @ 11:09pm

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, http://arstechnica.com/tech-policy/news/2007/11/patent-office-upholds-key-tivo-patent-at-issue-in-ec hostar-lawsuit.ars 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.
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Anonymous Coward, 7 Aug 2009 @ 4:11am

Re: ?
I really think in this case the infringer should be able to sue for damages, which is not exactly the same as an automatic return but a "told you I wasn't infringing and you got me through that rough trial" sort of argument.
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CleverName, 7 Aug 2009 @ 5:09am

Re:
What's your point?
Time after time bad decisions have come out of east texas.
So, you suggest that people should just give up.
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staff1, 7 Aug 2009 @ 10:17am

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 http://truereform.piausa.org/ for a different/opposing view on patent reform.
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under the covers, 7 Aug 2009 @ 5:43pm

Re: a shilling we will go
Leave Britney alone !
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vic kley, 7 Aug 2009 @ 7:20pm

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!
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This just in, 7 Aug 2009 @ 8:28pm

Re: Remind Me
Stupid patents approved by stuoid reviewers are reviewed by stupid reviewers - film at eleven
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Mike Masnick (profile), 8 Aug 2009 @ 10:02am

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...
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Ronald J Riley (profile), 8 Aug 2009 @ 1:08pm

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 - www.PIAUSA.org - RJR at PIAUSA.org
Executive Director - www.InventorEd.org - RJR at InvEd.org
Senior Fellow - www.PatentPolicy.org
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.
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CleverName, 8 Aug 2009 @ 2:45pm

Re: East Texas Court Is FAIR
What a load of crap.

Do you have an ounce of data to back up any of your silly claims?
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MikeIP, 17 Aug 2009 @ 8:13am

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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