Friday, September 23, 2005

EBAY GETS TRIPPED UP IN MERCEXCHANGE REEXAM: After checking in with the USPTO, I found this interesting development: Apparently, in April, eBay's counsel attempted to petition the USPTO, submitting arguments (to the tune of 100+ pages) and prior art in all of the reexaminations and 18 pending applications of MercExchange. In the arguments, eBay petitioned the Examiner to "take notice" of the art submitted, along with all the contentions of invalidity. The petitions filed in the pending applications were in the form of protests (37 C.F.R. §1.291), which also allow allegations of inequitable conduct, and third-party submissions in a published application (37 C.F.R. §1.99).

The big problem for eBay was that the timing (and form) of these submissions were off.

Regarding the reexam, the granting of the request occurred over a year ago and no patent owner's statement was filed. Accordingly, eBay was barred from making further submissions during the remaining course of the reexam. The USPTO noted as such in their dismissal of EBay's petition:

The cursory review shows that the instant petition is a third party paper filed after reexamination was ordered, and the period for filing a patent owner statement and responsive third party reply thereto have long since expired. Therefore, no further submissions on behalf of the reexamination requester will be considered, unless such a submission constitutes "bare notice" of court proceedings such as notices of suits or other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. Bare notice of court proceedings must contain no argument(s) or information beyond such notice to the Office. The cursory review further shows that the instant petition is essentially entirely comprised of various arguments regarding the merits of the determinations made, or not made, during the instant reexamination proceeding. See, for example, page 7 clause II (D)(1)(a) and page 16, clause III (B)(2) as two examples of impermissible argument.

As a result, the USPTO dismissed the petition and expunged all of EBay's documents from the file. Not surprisingly, MercExchange was more peevish with EBay's strategy and shot off a veiled threat back at eBay and their own patents in their petition to the USPTO:

Mr. Monahan, the individual signing eBay's filing, is the Intellectual Property Counsel for eBay, and the inventor of at least one patent assigned to eBay, U.S. Patent No. 6,523,037. Mr. Monahan's patent cites all three of MercExchange's patents undergoing reexamination as prior art references. Although Mr. Monahan appears not to be registered to practice before the Office, nonetheless the regulations provide that "[t]he presentation to the Office ... of any paper by a party, whether a practitioner or non practitioner, constitutes a certification under § 10.18(b) of this chapter." 37 C.F.R. § 1.4(d)(2). Of particular note, Section 10.18(b)(2) requires that a party's filing constitutes certification that "[t]he paper is not being
presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office". 37 C.F.R. § 10.18(b)(2) . . . Given the clear prohibition on eBay's participation in this reexamination, one must suppose that eBay filed its arguments simply for the improper purposes of interfering in the reexamination process and placing MercExchange in the position of objecting, and thereby increasing the costs to the Patent Owner and further burdening the Office.

You can view MercExchange's petition (and the USPTO decision) here. Unfortunately, the USPTO expunged eBay's documents as of last week, and they are no longer publicly viewable (I would love to see what eBay submitted . . .).

Regarding the applications, the USPTO again found that the form and timing of the submissions were improper:

While self-styled as a petition under 37 CFR § 1.182, a cursory review of the eBay communication reveals that it requests that the USPTO take notice of its prior findings alleged to have been arrived at during the course of prosecution of 18 related (common inventorship) patent applications, and that the USPTO apply these findings consistently in the examination of the instant non provisional application.

§ 1.99(d) states that any submission under this section shall not include any explanation of the patents, publications, or other information, and if such is included the USPTO will not enter the submission. While petitioner contends the submission occupies some 53 pages, the document actually subtends some 101 pages herein . . . therefore, the eBay submission contains an extensive explanation of the patents, prior art, and other information, that simply does not comply with § 1.99(d), which prohibits any explanation. Further, the submission facially is untimely within the meaning of § 1.99(e), and given the publication dates of the aforementioned patents and prior art, could clearly have been submitted to the USPTO earlier. Thus, retention of the eBay protest in this published application file is inconsistent with 37 CFR § 1.99.

While 37 CFR § 1.291 is more liberal that §1.99(d) in permitting a "concise" explanation of the information relied on, as opposed to precluding any explanation, the protest was untimely filed i.e., filed after publication. Nevertheless it lacks the permission of applicant required by § 1.291(b)(1) for consideration of a protest filed after publication containing even a "concise" explanation. As the eBay protest is facially not concise, and as it lacks, given the instant petition, any semblance of the applicant's written approval, its retention is likewise prohibited under § 1.291.

These documents were found in the prosecution history of MercExchange's application 09/779,551, and can be found here.

I really have to wonder what EBay was thinking here . . .

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