I have had a few requests to comment on this subject, but, after reading some of the posts here over the last few days, it seems that most folks understand that it is the defendants who have made the request and that, at this juncture, it is just that, i.e., a request to the PTO. As a result, I will give you some other info that might provide further insight.
Before proceeding further, let me first give credit to Paul (Blunist) for his call on this. As you may recall, he predicted that the defendants would make such a request, while I disagreed. Paul’s prediction was correct, and mine was not. This will hopefully exemplify something that I posted here long ago, which is that, no matter how good a lawyer or law firm may be, they aren’t always correct. Should you ever be seeking advice from a lawyer who says he/she has never lost a case or has never given the wrong legal advice, you should hang up the phone, leave the room, or walk the other way.
Although Paul was unequivocally correct in his prediction, I remain surprised that the request occurred only some two months ago and that no motion to stay the litigation has been filed. Requests for re-exam are often made with an eye toward such a stay, and, with our Markman hearing set for next week, a stay at this point seems unlikely, though certainly not impossible. At this juncture, and especially since the Markman relates mainly to the issue of infringement, not validity (the PTO re-exam is largely the opposite), I would expect the Markman to proceed as scheduled unless the defense attorneys know about some proclivity of our particular judge toward granting stays under such conditions.
In view of the above, and assuming the defendants don’t intend to request a stay before next week, about the only thing I can think of in terms of the strategy underlying the request for re-exam is that it is being used as a kind of “insurance”. The defendants didn’t get what they requested as to pre-Markman discovery, so perhaps they are thinking they may request a stay if the Markman result is pro-EDIG. After all, they would argue, their clients cannot infringe on a patent that isn’t valid, so the PTO should be allowed to do its work and, in the interim, the cost of litigation would be avoided. Obviously, there could be a myriad number of other reasons why these defendants have taken this step, so further speculation really isn’t very useful and we must wait to see how it all unfolds. It would certainly be expected that DM performed research on the issue of validity before deciding to take the case, and, again, while the mere fact that a good law firm decides to assume representation is by no means a guarantee of success, it is at least something.
While going through this experience with PTSC, many of that Agora forum’s members did considerable research on re-exams. By recollection, corrections welcome, PTO statistics show that requests for a first re-exam are usually granted, but that, in the long run, a considerable majority of patents are re-validated. Modifications are sometimes required, but only a small percentage of patents are outright invalidated as a whole — and, as others have posted, sometimes a patent is actually strengthened through having been re-examined. There is a very large number of articles you can read on this subject with a simple Google search, and many are quite well oriented toward the layman.
Of course, anything can happen, and it’s kind of like the guy whose doctor tells him that, statistically speaking, he has only a 1 in 100,000 chance of having cancer — if cancer is indeed diagnosed, then statistics don’t mean much to that poor fellow anymore. As to EDIG, the stats favor re-validation, but, as always, we shall see.
I hope the above is helpful to you. Best wishes to all of you and your families for the New Year.
