An end run around Acacia
 

For only a little more than a $2000 filing fee, one can force a reexamination of an existing patent. This is what a request for reeximantion looks like. It is, of course, a legal document and probably should be prepared by a patent attorney, but anyone with a bit of sense that can follow directions can do it.

They can be very effective when done properly. It basically challanges the claims of a patent within the Patent Office itself, avoiding the delays and exorbitant costs of the courts. Also, the (likely) prospect of endless appeals is taken out of the picture, since the Patent Office does have final say on what it grants a patent for. Or, as the case may well be, denies it on reconsideration.

What, exactly, is a "reexamination application" you may ask. The best definition is given here, in the fourth paragraph under the topic "After Issuance". Things to note:[list=1][*]The evidence submitted with the request has to be hard fact, copies of printed publications and manuscripts, no hearsay evidence or "I remember that this was so back then" allowed.[*]Anyone may file a reexamination application, but once it's filed, that person no longer has anything to do with the proceedings. So the entire argument you wish to make has to be made entirely within the application. Once it's received by the Patent Office, that's it! They will then give it consideration and make a decision.[*]With a Reexamination Application, you may attack individual claims of a patent instead of trying to take on an invention as a whole, which is what you have to do in patent litigation within the court system. In other words, say you find for-sure, definitive prior art that was overlooked in the original filing that covers only one or two of the claims of an invention. You can then ask that these specific claims be excluded from the patent or modified (and if they are modified, they can only be narrowed, not broadened) because the claims, as written, gives the patent more than it's allowed.[*]Within the reeximination application, you can show how the newly found prior art may prove that the patent in its entirity was granted in error. That it was, in fact, obvious to one skilled in the art at the time or was even in common usage. However, the argument has to be made with force, there isn't a chance to answer questions or go into detail later. Remember, once they receive the application, the person that filed it is out of the loop.[/list=1]

There's a (very lengthy!) text here that I want to pull some quotes from, since they describe what it's all about much better than I could:

2.8.1 Q. If I think some patent (software or otherwise) should never have been
granted, what can I do?

A. One choice is to ask the Patent Office to reexamine the patent. Pros are that it is
much less costly than litigation, and there is no requirement that you satisfy the
conditions for a DJ action (see below). Cons are that only documentary evidence
(no live witnesses) may be submitted, and you don't get to participate fully as an
adversary as you would in court. You'd have to pay the fee for re-examination,
approx $2K.

...

C. Yet another choice, if you have made, used, or sold something regarding which
you have a good-faith apprehension of being sued by the patent owner, you may
initiate a declaratory judgment (DJ) action. This forces the patent owner to "put up
or shut up" -- to proceed as if s/he had sued you for infringement, or to give up and
say you do not infringe. If you show that the patent is invalid, the result is that the
court invalidates the patent.

2.8.2 Q. I have information in the form of a patent or printed publication that I think
bears on the validity of an issued U.S. patent. I wish to make sure that if the patent
is acted upon (e.g. asserted in litigation, reexamined, or reissued) my information
will be taken into account. I am not, however, willing to pay the fee (ca. $2K) for a
reexamination application. What may I do? May I do it anonymously?

A. Prepare a submission of the patent or printed publication, together with an
explanation in writing of the pertinency and manner of applying such prior art to at
least one claim of the patent. The citation of such prior art and the explanation
thereof will become a part of the official file of the patent. If the person making the
citation wishes his or her identity to be excluded from the patent file and kept
confidential, the citation papers must be submitted without any identification of the
person making the submission. You should then do one of the following:

1. Prepare an extra copy of the submission, and send it to the patent owner at the
correspondence address which the patent owner has filed with the Patent Office. In
the copy you send to the Patent Office, attach a statement that a copy of the same
has been mailed to the patent owner, giving the details of the address used, or,

2. File the submission with the Patent Office in duplicate. In your submission,
make reference to the U.S. Patent Number. Authority: 35 U.S.C. sec. 201, 37
CFR sec. 1.501, MPEP sec. 2202. If you want an ackowledgement that the
submission was received by the Patent Office, enclose a self-addressed stamped
post card detailing the contents of your submission. The Patent Office mail room
will stamp the card and mail it back to you. Besides assuring that the reference will
be considered during any subsequent reissue or reexamination proceedings, a
possible further effect of your submitting a reference to the Patent Office is that it
may come into the possession of parties approached for license by the patent
owner. It is commonplace that one approached by a patent owner will order up a
copy of the file wrapper. In doing so, one would receive with it the references, if
any, submitted by third parties.

Long story short- for a bit more than two grand, you can take prior art that wasn't listed in the original patent application to both whittle away at the individual claims of the patent, effectively narrowing the breadth of what it covers, or (in some cases) completely invalidate a patent.

:thumbsup

I was wondering about this idea... how long does this process take? I'm also wondering if you couldn't take all your evidence right to a judge somewhere and ask for an injunction barring them from enforcing the patent. If you had tons of documentation showing that it was bogus, would something like that fly?

Good stuff.. Shit like this is whats gonna make or break their patents in my opinion..

Media

Some very good threads on ACACIA today.

These are the thread links that should put on the IMPAI.org website.

OK. here's a thought. We have IMPA organized to protect media rights on the internet in general (they could'nt legally band together just to fight Acacia, btw, so that is what they are all about) and they seem to be preparing for a major battle royal.

Should we support them? Hell yeah! They're fighting the good fight.

Should we donate to their fight? Yes, indeed! The way they have chosen is going to be expensive and the outcome may affect us all.

Should we depend on them? Well... why should we? Have we gone fuedal on the net, where we need castlekeepers (read: "kings") to protect us? I think not.

Let IMPA do what IMPA will. Support them in any way you can, they'll need every bit of help through this coming battle and more power to them.

But, in the meantime, can you see how a dozen or so independent webmasters could file Reexamination Applications could turn the tide of battle? Some may draw just a little blood, some more. But the overall effect would be a drain of their resources, weakening them, distracting them...

Nice find :thumbsup

Do you happen to know whether there's a limit to the number of times a different party can file a re-examination request, ie could 50 webmasters each file their own separate re-examination request?

I would think as many could file that want 2 file. You or me have no ideal what Joe Blow is doing. So file away. Better if 1,000 filed.

Anybody can file as many Reexamination Applications as they want. Just keep in mind that it's two big bills each filing.

Someone did point out that I should mention that there is an internal PTO Board of Appeals where the findings of the (re)examiner can be contested and that there are rare instances where it does escalate into the court system past that point.

This is not an easy thing to attempt, btw. The only evidence you can submit is hard fact with a written argument how it should be applied to limit the scope of one or more claims made within a patent. To do it correctly, you have to be familiar with exactly what the claims are of the invention and have at least one document that was published before the filing date of the patent that shows where the claim(s) you are asking to be reexamined are either too broadly written, obvious from existing works, in common usage at the time, or otherwise invalid as written.

What won't work is, for example, stating that the owner of a patent is abusing their grant by trying to inappropriately apply it to such and such. To accomplish that same end, you have to find specifics within the claims that you can attack with prior art that was overlooked in the original consideration of the Application. Once a claim has been narrowed or invalidated this way, the Patent as a whole will be then modified into a narrower definition of what it actually covers.

Here is a simple and to-the-point explanation of what this is about. As far as "tons of documentation", I think this approach is more suited to submitting one document of prior art at a time, with a forceful argument as to how it should be used to limit the claim(s).

And keep in mind, that it doesn't cost anything but postage to submit comments and documents that become a part of the patent's "file wrapper", which then become available to anyone interested enough to ask for it (read section 2.8.2 in the italicized snippet I gave in the posting above). In other words, if you don't think you have a strong enough case (or may just lack the money to file a Reexamination Application), you can simply add to the documents that travel with the patent from that point on. Perhaps an interested party later would see the significance of what you submitted and be able to use it.

And, here's something that Berman failed to mention on the D-Money Show: Before a person can make an informed decision about signing a patent license, they really need to go through that patent's file wrapper. No telling what baggage it might be carrying..

some useful info 5eyes, but correct me if im wrong but I think this has gone too far now and is already in the courts as Acacia has initiated lawsuits already

A word of caution on this. Be careful, talk to a sophisticated attorney and coordinate with with the current defense group.

If you do a reexam and lose, you then may actually insulate any prior art presented in the reexam from being used to invalidate the patents in litigation.

No, look at 37 C.F.R. 1.510, part (a) where it says "Any person may, at any time ..." This means even if you are tangled in a complex court case, you can file a Reexamination Application. This follows logically from the fact that you can file these anonymously and that patent litigation does not invlove the Patent and Trademark Office, it happens within the civil court system.

Perfect ...
Sounds like a project to me ...

Find a slide show where while the first slide was loading - as - the other slides continued to load. This is a form of compression technology. I am certain it existed before the patent.

Somebody - check Gem(?) - which was overtaken by Microsoft for icon based point and click DOS.

We need a few people to dig around in their old 286's and 386's.
Crank them up ... you will get a few ideas.

If I'm correct - J*avascript provided simultaneous loading of graphics which is time compression technology.

When GIF went animated? Are "optimized" GIF images compression technology?

In fact - so did HTML if you did it correctly using pop-ups. ; )

Isn't taking a real 640x480 graphic and resizing it to half that ... then in the HTML CODE - of the page displaying the graphic - FORCE it back to original resolution time compression technology?

If unix was able to send by prompt commands pkzip files to other servers, where the pkzip file was video - is this not video compresssion technology?


There's a few ideas ...
I hope that helps.

That's always good advice!

I'm uncertain whether the current defense group could coordinate such a thing or whether it might be construed as an unfair business tactic on their part (a charge that Acacia seems more than willing to try to level at IMPA). This may, if it happens at all, have to be more of a grass roots thing.

Almost a good point, except that each and every Reexamination Application can only result in one of three determinations, either the contested claims stand as written, they are narrowed (never broadened) or they are removed entirely from the invention. Though the submitted prior art, argument(s) set forth concerning it and the PTO determination all become part of the file wrapper of the patent, subject to inspection by anyone who cares to look, someone else can still resubmit the exact same prior art with an entirely different argument and set of points that the filer feels should be considered.

But most importantly, you have to keep in mind that at no point can a specific prior art be considered invalid in later examination of the claims of a patent. A single document may be used to present one set of arguments against a specific claim and another set of arguments against either the same claim or a different one. The concept of "insulating" prior art simply because one argument concerning it didn't sway anyone at the moment doesn't exist. There is either prior art out there, or there isn't. Either the inventor fully disclosed and correctly considered the pror art or he didn't. And the PTO is the first to admit that they cannot possibly do an exhaustive search and analysis of prior art with their alloted resources.

In fact, for no cost at all except postage. you can (and should!) enter prior art with your comments and observations into the file wrapper without any determination being made upon it at the moment. These are known as "citations" and are explained here. This is the baggage that a patent accumalates during the time it's enforceable that may never be acted on. That is, until some interested party realizes the significance of your find and does call it to attention.

Quote - Fiveyes
Yes
Homegrownvideo.com has been voted out by my vote.
As soon as we can.

Talking with the defense group would be a good thing to do. If they can't coordinate with you they will say so, but if they can coordinate with you there may be a time that would be most advantageous to file this.

It would really suck to fuck up their case trying to help.

Please remember that the IMPA and the defense group are two separate organizations. The IMPA is working on more then just the Acacia problem.

If they can coordinate such a thing, I'm certain they'll step in and do it. If the idea might be detrimental to their offensive, I'm certain they'd say so.

I do know one thing, putting all of our eggs into one basket is never a good idea. The cost of litigation is huge and it's great to have a team that seems capable of handling it. I'm just showing that there are ways to act independently on this matter at a much lower cost. Ways that have a proven effectiveness.

Back in the day before the 14.4 modems existed we used a perl techonlogy to move the compuserve (which was one of the biggest access providers) gif technology to do animated slide shows fed from live cameras

The files were digitized compressed and sent to the client using cgi programming and video conference software and any other thing we could think of.

There were programs once we got 14.4 like cuseeme I can't remember the dates :smokin I do not remember why I can't remember the dates butt it was a shit load of ounces ago.

What is the deal with the dates on cuseeme and those guys from back in the day?

NYC-212: That is excellent advice!

Talk to an attorney!

Patent Law is very specialized and attorneys must take a special bar in order to practice it...

Don't do anything hastily and without the advice of someone qualified in this field.

Sexeducation: In my opinion... We are not on an episode of "Survivor".

If you have any questions about how we are handling this then feel free to call.

We are not about to try this case on the boards.

Everyone should make their own decisions, but please make sure that you do it under advice of counsel.

That's entirely correct! :thumbsup
There is no substitute for advice from a professional in these matters.