Reexamination of Patent No. 5,629,867 ordered as further questions of “patentability” surface.
Our friends at Mission Abstract Data (and, in turn, their friends at Digimedia and IPMG AG – as is our custom, we’re refer to them all collectively as MAD) got some disappointing news from the U.S. Patent and Trademark Office (USPTO) on August 21. A USPTO Patent Reexamination Specialist has issued an order granting a request for reexamination of one (i.e., Patent No. 5,629,867) of the two patents on which MAD has been relying in its efforts to convince radio broadcasters to enter into licensing arrangements with MAD in order to avoid patent infringement liability.
[We expect to have a link to the USPTO order available soon. It’s already available through the USPTO website, but getting to it through the USPTO’s, um, unusual system takes a lot of effort and some guesswork. Check back here over the next couple of days. UPDATE: Here is the promised link to the USPTO's order.]
We won’t revisit the history of MAD’s efforts. You can get a reasonably good idea from our past posts collected here. And in keeping with our repeated disclaimer about our acknowledged lack of patent law expertise, we also won’t delve deeply into the nitty-gritty of the order.
But we have read the order, and were struck by the fact that the USPTO specialist concluded that “substantial new question[s] of patentability” have been raised as to all ten claims comprising the ‘867 patent.
While the mere raising of questions doesn’t rise to the level of final conclusions, we suspect that it can’t be a good sign for anybody hoping to rely on the patent subject to such questions. We’ll just have to wait and see how the further reexamination proceeding comes out.
When might that be? Not until early 2013, at the soonest – or so it would appear. According to the USPTO’s order, MAD has until October 21 (i.e., two months after the issuance of the order) to file a response, should it so choose. (It’s hard to imagine that MAD would choose not to respond.) And then, should it so choose, the party who requested the reexamination gets another two months after that to respond to anything that MAD lobs in. A quick glance at the calendar indicates that the pleading cycle would thus wrap up a couple of days before Christmas. Once you factor in some time for the USPTO folks to enjoy their holidays, read through the various submissions, and crank out a further order, you’ve got to figure 2013 is the magic number.
The reexamination order could also have an impact on MAD’s lawsuit in the U.S. District Court in Delaware. That litigation has been stayed since last year, when the USPTO announced its first reexamination of the MAD patents. Once the initial reexamination was completed this past spring, MAD promptly asked the court to lift the stay. That request is still pending (at least as of August 22). Now that the USPTO has cranked up the reexamination process relative to one of the MAD patents, the court may be more inclined to leave the stay in place. We shall see.
Check back here for updates.