OUT OF THE FIRE AND BACK TO THE FRYING PAN - FORGENT PREPARES FOR MARCH 9 MARKMAN: Since all the RIM/NTP hubbub died down last week, Forgent will likely climb back into the limelight with its pending case against 30+ blue-chip defendants in the Northern District of California, San Jose Division (action no. M:05-CV-01654). Since filing the complaint, over a dozen companies have settled with Forgent on claims 1-11 and 38 of their '672 patent.

The original Markman hearing was scheduled for Feb. 13, but was postponed do to a criminal case that took precedence in the court, due to the capital offense.

The Markman will be a significant event in the case, as Judge Fogel will interpret the meaning of the claim terms and rely on that interpretation for the remainder of the litigation. Typically, parties will immediately file motions for summary judgments after the Markman ruling, and many cases settle shortly thereafter, depending on how the Markman hearing went. Currently there are 11-or-so claim terms that are in dispute before the judge and are they are generally focused on the technology for forming runlength codes and "statistically coded signals" for encoding and decoding.

The Markman will also set the course of action for Forgent and the remaining life of the '672 patent (which expires in October) - according to the company, 1,100 potential defendants have already been identified by Forgent and plans are underway for further lawsuits.

The hearing is also taking into consideration the reexamination request that was recently granted by the USPTO. The request was made by PubPat, a non-profit patent watchdog group that is not affiliated with the case. Two strange facts are worth noting regarding the reexam: (1) despite being in force for almost 20 years, this is the first reexamination request ever filed on the '672 patent, and (2) an earlier Forgent patent, not cited during the prosecution of the '672 patent, is being asserted as prior art. It will be astounding if the USPTO invalidates the '672 patent based on this alone. But considering the hard-line stance the USPTO took against NTP, it seems anything is possible.

Also, it is likely that the Forgent defendants will be filing additional reexamination requests after the Markman hearing (particularly towards the end of discovery). This has shown to be a valuable second prong of attack for defendants (Microsoft, RIM, EBay) litigating against patents perceived to be harmful to a particular industry. Free from presumptions of validity and claim contruction rules, the PTO has shown some eagerness in using its administrative powers to take high-profile holding companies down a notch or two when validity is questioned.