Delaware judge, USPTO take actions in long-running patent matter, but it’s hard to say what it all means.
Talk about mixed signals! March 25 very likely marked a crucial turning point in the up-and-down, back-and-forth tug of war between Mission Abstract Data (MAD) and many radio broadcasters, but it’s hard to tell for sure which way it turned and in whose favor.
On the one hand, in the federal court lawsuit in Delaware, on March 25 the judge denied MAD’s motion to lift the stay that has held that case in suspended animation for more than a year already. But in the same order the judge held that the stay would be lifted “upon the issuance” by the U.S. Patent and Trademark Office (“USPTO”) of “Notices of Intent to Issue Reexamination Certificates” (NIRCs) with respect to MAD’s two patents. As our loyal readers know, those patents have undergone not one, but two separate reexaminations at the USPTO over the last year or two. Indeed, it appears that the judge in Delaware has held his case in abeyance until the USPTO reaches some final conclusion about the nature and validity of the patents.
But in a remarkable coincidence, also on March 25 it appears that the USPTO issued an NIRC relative to Patent No. 5,809,246 (the 246 Patent) and a “final rejection” relative to at least some aspects of Patent No. 5,629,867 (the 867 Patent). (The term “final rejection” appears in the PTO’s online description of the document.)
If you weren’t confused already, hang on.
The NIRC reflects that 19 of the 30 claims made under the 246 Patent have been “confirmed and/or allowable”, while three claims have been cancelled. And the “final rejection” of the 867 Patent reflects that six of the ten claims under that patent have been “confirmed and/or allowable”, while two have been rejected and two have been canceled. As to the resulting status of the patents, we’re fairly certain that: (a) they still exist in some way, shape or form, but (b) they are not broader (and almost definitely are narrower) than when the second reexamination process began.
All of this provides us with a reminder (which we really didn’t need) that we are not patent attorneys. There is obviously much going on here, but we are not now in a position to try to explain it. (We expect to be getting with patent counsel in the near future to review all of these developments so that we can have a better handle on them.) But based on our experiences thus far in the MAD saga, we expect that these developments may cause MAD to begin another high-pressure outreach effort to sign radio stations up to patent license agreements. Because of that, we think it important to provide our readers with access to the underlying documents – the order from the Delaware judge and copies of the USPTO’s actions – so that they can review them first-hand and share them with their own counsel.
As we have repeatedly suggested in previous posts, radio operators would be well-advised to consult with their own patent experts before making any decisions as to how best to proceed. The PTO’s recent decisions will have to be carefully parsed to determine, among other things: (a) precisely what aspects of MAD’s patents may remain; (b) whether any particular station’s facilities in fact can be said to infringe on what’s left of the patents; and (c) even if there may be some infringement, what the likely exposure would be if MAD were to sue for damages. Again, the area of patent law is complicated, as the March 25 developments plainly demonstrate. Before you try to tiptoe through the minefield, you’d best get yourself some expert advice from patent-savvy folks.
