I don’t usually bother calling other attorneys about PTSC-related issues because, as I’ve said many times, all of us could call 10,000 of them and we would probably get close to a 50% split on whatever issue is under consideration. And even if we got a 100% consensus, the fact remains that the only legal opinion that will carry any weight is the one that comes from the judge.
Nevertheless, after reading the recent Markman ruling, I became both intrigued and concerned about two issues, so I got a referral to a patent attorney from a business client of mine, and I spoke with that attorney, who I’ll refer to as “Jim”, this past Friday. Remember, what follows is merely his opinion — even if he’s right, Judge Ware (or whomever makes further rulings in our case) could still rule otherwise.
My first inquiry to Jim was about the issue of validity, and my concern was based primarily on footnote 37 of the Markman ruling, which pertains to the ‘336. In that footnote, Judge Ware raises the validity issue, but uses the language, “...the validity of the patent claim at issue” (emphasis mine) — the footnote addresses only claim 1 of the ‘336. Nevertheless, I was concerned because Markman rulings usually address and affect only infringement. I certainly don’t consider myself anywhere near being expert in patent law (which, obviously, is why I called Jim), but in all of the Markman rulings I’ve read over the last several years, I can’t recall seeing any that have specifically raised validity in any fashion.
With this in mind, I asked Jim whether the invalidation of one claim of a patent would invalidate the patent as a whole, or whether the remaining claims (assuming they didn’t use or incorporate the same language) would stand. Although Jim was careful to state that there can always be exceptions, the answer, in general, is that the entire patent would not be invalidated merely because one claim is found to be invalid. He also explained to some extent the role of “dependent” and “independent”claims in this context, but I’m not sure that’s really applicable in the present scenario.
I certainly hope we prevail on the “ring oscillator” issue because it will affect some of the other MMP patents as well, and in my very “non-tech” opinion, it seems to me that TPL has the better position. However, it appears to me that the above could be important in terms of some of the other claims of the “336. I seem to recall that Ease, and perhaps several others, have spoken to some extent about this subject over the last few weeks, and I apologize if I’m merely stating the obvious or if I’m covering old ground. I get beyond my understanding very quickly as to tech stuff, so I’ll leave it to those who have such knowledge to comment further if they so choose.
My second inquiry to Jim spoke to the issue of whether prior art previously considered and distinguished in PTO re-exam proceedings could nonetheless be “revived” (my term) and used during litigation to the detriment of the patentee. You may recall my post a couple of weeks ago on this subject, which came from a post on the EDIG board — the website article cited therein seemed to indicate that the answer to this inquiry would be “no”. However, if that is correct, then why is Judge Ware talking about “Talbot” when the PTO examiner has already determined that “Talbot” is not prior art?
On this question, Jim indicated that he has never seen such a thing occur, but that, since the prior PTO exams were “ex parte” in nature (i.e.., they did not include the T3), it is possible that the Court may be able to validly reconsider the patents cited as alleged prior art during those proceedings. However, it was also his opinion that, even in that event, the party now relying on such prior art in litigation would need to prove its application by the “clear and convincing” evidentiary standard — this is considerably beyond the “more likely than not” standard of regularly applied in most civil cases, but less than the “beyond a reasonable doubt” standard of criminal cases. It is considered a very difficult standard to meet, which, in this instance, is good for TPL, and therefore also good for us.
I hope I haven’t bored everyone to tears with this lengthy post, but I felt that if these subjects were important enough for me to inquire about by asking a “real life” patent attorney, then you deserved to know the results and to have them explained in sufficient detail. Best wishes to all.
