right to stop the re-exam process?

[xapeila]

What is the name of your state?tx
Hi Everyone, This may sound abit crazy and I hope I am writing a clear and understanding question.
A Patent owner’s attorneys are asserting his own interpretation of a specific claim in a vary broad way ( computer hardware surface and purpose ) to us and claims infringement, but the patent reads in a very specific and narrow way ( computer hardware surface and purpose). Which in the prosecution history shows where he had to narrow this particular claim (his first and second attempts were rejected cited prior art) and was asked to narrow it down to a specific surface and purpose.

If during re-exam process (if approved) of a Patent, can the Patent holder tells us that we are not longer infringing (takes it back to the original narrow interpretation) does he have the right to stop the re-exam process by his comments to the examiner that he really meant the narrow interpretation?

The patent owner started out with 2 Patents and specific claims on each Patent, after much discussion between his Attorneys and our VP they dropped Patent 1 by saying they believe that it was not applicable to our software. So Patent two remains which we too believe it is not applicable to our software as well. All we are wanting to get a clearly defined claim but we are forced take it to re-exam which we have many documents exciting vintage hardware to prove his broad interpretation will invalidate his Patent.
Thanking everyone in advance, Xapeila

 

[divgradcurl]

If during re-exam process (if approved) of a Patent, can the Patent holder tells us that we are not longer infringing (takes it back to the original narrow interpretation) does he have the right to stop the re-exam process by his comments to the examiner that he really meant the narrow interpretation?

Nope. Once a reexam is started, neither side can stop it. That's why it is often referred to as the "nuclear option" -- it's like a nuclear missle -- if it's in the silo, it can be fired at any time, so it pays to negotiate, but once the missle is fired, you can't get it back.

In fact, something to consider is that reexams often take quite a while to process -- usually more than 2 years, and some reexams currently have been in process for more than 4 years. Once your fire the reexam bullet, you can't get it back, and then the other party really has nothing to lose by suing you. This recently happened with Research in Motion (the Blackberry folks), they filed for reexam on some patents that were being asserted against them, the patent holder sued, and RIM ended up paying out around $500 million for the infringement -- and then a coupl eof months after settling, the reexam invalidated the patents. Now they are back in court.

Point being, a reexam doesn't put potential litigation on hold. Another thing about reexam is if the patent office comes back and upholds the claim language, you are screwed, because all of that prior art you dug up, if the PTO looks at it and still finds the patent valid, well, the courts aren't going to take it very seriously.

Reexam is a powerful tool, but it's use can have consequences. It's almost always more powerful as a threat -- but remember, if you do end up using it, you unleash a genie that can't be put back in the bottle...

 

[xapeila]

Nope. Once a reexam is started, neither side can stop it. That's why it is often referred to as the "nuclear option" -- it's like a nuclear missle -- if it's in the silo, it can be fired at any time, so it pays to negotiate, but once the missle is fired, you can't get it back.

In fact, something to consider is that reexams often take quite a while to process -- usually more than 2 years, and some reexams currently have been in process for more than 4 years. Once your fire the reexam bullet, you can't get it back, and then the other party really has nothing to lose by suing you. This recently happened with Research in Motion (the Blackberry folks), they filed for reexam on some patents that were being asserted against them, the patent holder sued, and RIM ended up paying out around $500 million for the infringement -- and then a coupl eof months after settling, the reexam invalidated the patents. Now they are back in court.

Point being, a reexam doesn't put potential litigation on hold. Another thing about reexam is if the patent office comes back and upholds the claim language, you are screwed, because all of that prior art you dug up, if the PTO looks at it and still finds the patent valid, well, the courts aren't going to take it very seriously.

Reexam is a powerful tool, but it's use can have consequences. It's almost always more powerful as a threat -- but remember, if you do end up using it, you unleash a genie that can't be put back in the bottle...

Thank you for your reply. The problem with the patent holder’s assertion of this particular claim is very broad, the patent reads very specific and narrow interpretation. If we follow how the claim reads them we know we are not infringing. If we follow his broad interpolation then we have publications/references/ Dr Dobbs/ PC Week even hardware that there was prior art.

Once cornered he may drop his interpretation and follow the more specific one on the patent. That is all we want is to follow the rules. He has dropped one other patent because we proved to him it was not applicable to our software. He also refuses to send a letter to our partners telling them that they have dropped the first patent.

He uses non accusatory language "your software may be infringing, you may want to take a license from us” in the mean time his attorneys contacts our partners via email and telephone, using the same language and has caused them to stop selling our software. We feel he will not sue us we are a very small start-up and cannot afford litigation but we can afford re-exam fees. Where ever it go at least we feel we will get the true interpretation of his Patent.

Thank you for your time, Xapelia