Invalid Patents

[Miscue]

http://www.mbf-law.com/pubs/articles/522.cfm

/me wonders why the paintball industry doesn't take advantage of the ability to request a re-examination of an invalid patent.

[Mindflux]

Originally posted by Miscue
http://www.mbf-law.com/pubs/articles/522.cfm

/me wonders why the paintball industry doesn't take advantage of the ability to request a re-examination of an invalid patent.


/me wonders why you're emoting on a forum.

[11_Mile_TMaster]

/me actually thinks it's funny.

[hitech]

And Tom called me the king of internet searches. Looks like you should get the title now. :D Do you know anyone at AKA you could send that to? I think you should email it to Tom also. :D it seems taylor made for the SP patent.

[spantol]

I've just forwarded that to a semi-contact at AKA. Odds are that they've seen it already, but I figure it's better to play it safe. Good catch, Miscue.

It sounds to me, though, that anyone pursuing such a strategy would need to have concrete prior art to show.

[Miscue]

http://www.uspto.gov/web/offices/com/sol/notices/rexam809.html

Looks like you just get a 3rd party going, and front some money.

"Regarding the reexamination fee, 35 U.S.C. 41(d) requires the
Commissioner to set the fee for reexamination at a level which will
recover the estimated average cost to the Office. The estimated
average cost is $4,500 per patent owner requested reexamination and
$11,000 for third party requested reexaminations. The difference in
price takes into account the estimate that the examiner will spend twice
the amount of time examining a case where a third party requester is
present and additional costs incurred during the appellate stages
incident to additional processing steps required in the third party
proceedings."

You get like 5 parties to front about $2k, and say... go through SPPLAT as the organization doing this... there ya go.

[hardr0ck68]

if there was an fund/orginization (such as SPPLAT) doing this i would toss my monies in...I hate SP and would be willing to help pay for this!!

[shartley]

/me has said the same thing since the first person said it was invalid.

[edweird]

superb find brian...

We would just need to have the ducks in a row before splashing this injunction down... so we arnt handing an limp wristed case to them im sure this would have much potential.

after all last thing we want is SP to win this due to our own disorganization.

Hell id even dotate a nominal fee to get this in works.

[spantol]

First, we need to try to find out if AKA tried this already. I know that they were aware of this option.

[spantol]

Also, if no one else has done so, I'd be happy to e-mail a couple of organizations to see if they'd be willing to handle the logistics of a fund. SPPLAT seems a good place to start. It seems like the kind of thing Palmer's might be interested in, too.

[edweird]

Palmer has to much to wrorry about atm...

he is invetigating the whole CO2 tank death thing... and in general has never been a huge fan of electronic operated markers.

[wobbles82]

I also doubt Glen Palmers direct support, he may not like the whole shibang, but hes more focused on semi and custom markers, and this whole C02 tragedy. In any case, I would definately support it, but I have a question. Does anybody have a..general statement or whatever to work with? Like, what exactly is wrong with the patent? I realize the patent and everything around it is ridiculous and horrible but im saying what can be found to be changed, or is it just the fact that its ridiculous that it can be changed? Also, for support..id say ...seek Doc, he might give something up, possibly, I know he has a lot to say in a very intelligent matter about this sorta thing. :D

[shartley]

Actually I would advise this be done by either someone who does not have a business in the industry, or if they do that they be directly affected by the patent. It would be best though if it was done by an impartial 3rd party. And someone who has nothing to gain or lose either way… not to mention that can’t be affected by any potential backlash.

But folks are free to do what they want…..

[spantol]

Incidentally, AKA can't tell us whether or not they tried that. Stupid gag order...

[MayAMonkeyBeYourPinata]

That cost is still cheaper then, then legal fees, so I dont see why someone is attempting this.

[spantol]

The problem is, both ICD and AKA may very well have tried this. With the relative costs being what they are, I can't imagine why they wouldn't have. With the gag orders, though, we'll never know.

That said, I'd still contribute to a third-party effort to get one started.

[Kevmaster]

and im guessing that a company like SPLATT woult want to for fear of possible backlash w/i the industry. however, i would be interested in trying to donate awell

[vf-xx]

Find a patent lawyer as an impartial 3rd party.

You may also try a reasonable law college to look into it. While they can't actually argue the case it might make an interesting project grade for someone and you'd get a bunch of research for cheap/free.

[PB700]

I think Have Blue found some prior art i seen it on Docs web site http://www.network54.com/Hide/Forum/message?forumid=9013&messageid=1078263185

[AGD]

You can't request a re-exaimination if your in court over the patent. Has to be a third party. Most of the third parties don't think they will get sued.....

AGD

[hitech]

Originally posted by AGD
You can't request a re-exaimination if your in court over the patent. Has to be a third party.

Well, if that is true, are you not currently a third party?

[RoadDawg]

You know what would sound good. AGD the company that brought down the SP Patent. Kinda gives me butterflies in the stomach. :) Anyways. It'd be nice to see a 3rd party try this and see how it turns out.

[Miscue]

Originally posted by RoadDawg
You know what would sound good. AGD the company that brought down the SP Patent. Kinda gives me butterflies in the stomach. :) Anyways. It'd be nice to see a 3rd party try this and see how it turns out.

IMO, it would be better if a non-profit group developed, independent from any manufacturer... receiving donations from paintball players/companies to be used to pay for the fees.

[hitech]

Here is a continuing discussion about third party reviews of patents:

http://www.automags.org/forums/showthread.php?s=&postid=1332759#post1332759

[Gunga]

Here's an article from the March 6, 2004 issue of the Chicago Tribune about a patent review. Gives some basic info and stats about the patent review process.

http://www.chicagotribune.com/technology/chi-0403060219mar06,1,1730143.story?coll=chi-business-hed

Patent ruling threatens award in Microsoft case

Chicago man won $521 million infringement award

By Barbara Rose
Tribune staff reporter

March 6, 2004

In a potential threat to a Chicago inventor's $521 million jury award against Microsoft Corp., U.S. patent examiners have made a preliminary finding that his patent never should have been issued.

The finding is the first step in a process that could invalidate the 6-year-old patent claimed by Michael Doyle, founder of Eolas Technologies Inc., which licenses the technology.

He and the University of California, which owns the patent, claim rights to widely used technology that allows Web browsers to launch programs, such as the plug-ins that play music.

Eolas and the university won one of the largest verdicts in patent infringement history in August, when a federal jury decided that Microsoft had illegally incorporated the features into Internet Explorer and bundled it with Windows. Microsoft has appealed the verdict.

The patent re-examination--a separate process--stemmed from an outcry sparked by the court case. Companies, including longtime rival Apple Computer Inc., joined Microsoft in devising software changes to allow developers to work around Doyle's patent.

Tim Behrners-Lee, who some refer to as the father of the Internet, appealed last fall to the U.S. Patent and Trademark Office, claiming--as Microsoft did in court--that Doyle was not the first person to use browsers to make Web pages interactive.

Members of the World Wide Web Consortium, including some of Microsoft's historic foes, feared that enforcing such broad-based claims will stifle innovation and riddle the Internet with restrictive tariffs.

Late last month, the patent office issued a preliminary determination that Doyle's claims were not eligible for a patent because they were not new.

"We have maintained all along that, when scrutinized closely, this patent would be ruled invalid," Microsoft spokesman Jim Desler said Friday.

Desler called the decision "clearly a positive step."

The university and Doyle have 60 days to respond.

Martin Leuck, their attorney, said the development is not unusual in a patent re-examination and does not mean the patent will be found invalid.

"It's a more or less expected step from the patent office," he said. "We believe based on the quality of the [invention] itself that the claims are patentable, and we're going to respond accordingly."

Paul Vickrey, a patent attorney with Niro, Scavone Haller & Niro in Chicago, said, "It's been our experience, this is quite common" for an examiner initially to reject the patent's claims during a re-exam.

A spokeswoman from the patent office could provide no statistics on how often preliminary findings are upheld.

However, she said that in 68 percent of re-examinations, one or more of the patent's claims are changed.

Thirteen percent of time, all of the claims are confirmed, and 19 percent of cases resulted in all claims being canceled.

Copyright © 2004, Chicago Tribune

[Cristobal]

More info on Third Party appeals and changes in Patent regulations:
http://www.aplf.org/mailer/issue73.html



In 1999, Congress authorized the inter parte reexamination of an issued patent, granting third parties the right to request, and fully participate in, the Patent and Trademark Office's reexamination proceedings. See 35 U.S.C. § 311, et. seq. This alternative to litigation in the federal courts received very little interest, in part, due to the subsequent constraints on the third party requestors. Only the patent owner could appeal the PTO's reexamination decision to the Federal Circuit, and a successful reexamination barred the third parties from ever again raising grounds for invalidating the patent that were or "could have been" raised in the inter parte reexamination.
35 U.S.C. § 315(c).

Last year, Congress amended the inter parte reexamination law to give third parties the right to appeal the PTO's decisions to the Federal Circuit. See 35 U.S.C. § 315 (b). On April 28, 2003, the PTO issued proposed amendments to its regulations, 37 C.F.R. §1.903, et. seq., to implement this change in the law. The proposed amendments also include rule changes permitting patent owners and third parties to correct inadvertent errors in their appeal filings, and measures to streamline the inter parte reexamination process so that they can be carried out with "special dispatch."

The rule changes cover, among other issues, the time periods and service requirements for notices of appeals; a definition of final appealable decisions from the PTO Board of Appeals; and the time periods for joining and/or cross-appealing an appeal by other parties to the reexamination. The proposed regulations also limit third party Federal Circuit appeals to those from inter parte proceedings commenced after November 2, 2002, the date the changes to the reexamination law went into effect.

By providing third parties the same right to appeal as the patent owner, these rule changes implement a much needed improvement to the inter parte reexamination law. The inter parte reexamination option now offers a realistic and cost efficient alternative to expensive federal court litigation, when a patent is wholly or partially invalid in view of prior art patents and printed publications. Moreover, other changes to the reexamination law expressly permit the PTO to commence an inter parte reexamination based on prior art considered during the patent's original prosecution, allowing third parties to address issues that the PTO missed or misapprehended in allowing the original patent to issue.

[1stdeadeye]

Originally posted by AGD
You can't request a re-exaimination if your in court over the patent. Has to be a third party. Most of the third parties don't think they will get sued.....

AGD

Tom,
You haven't been sued yet have you? Especially now that you are dropping Electros from the line, why would they sue you?

[cledford]

Where did the $11,000 fee that has been tossed around come from? Is there a fee for re-examination? If so, how much is it?

-Calvin