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`Examiner Name
`
`FERRIS Fred
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`I hereby revoke all previous powers of attorney given in the above-identified application.
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`251
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`Electronic Acknowledgement Receipt
`
`Application Number:
`
`90009329
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`MULTIMEDIA TIME WARPING SYSTEM
`
`First Named |nven‘or’APP|icant Marne:
`
`Customer N um ber:
`
`29989
`
`Filer:
`
`Lori Ann Gordor-u’Maya Bennett
`
`Filer Authorized By:
`
`Lori Ann Gordon
`
`Attorney Docket Number:
`
`454032800200
`
`Receipt Dale:
`
`Filing Date:
`
`18—FEB—2009
`
`‘I0-NOV-2008
`
`Time Stamp:
`
`16:22:10
`
`Application Type:
`
`Reexam (Third Party)
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`Payment information:
`
`Submitted with Payment
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`Document
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`.
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`Document Descflpmm
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`25130U2FiE>{0POA.pclf
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`il llI:‘3I3t.‘llU.v(1AiIJJ .f--}ScE'.'~|Jat1IP)8hl(‘ IA‘!
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`Part Lzip (ifappl.}
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`Multipart DescriptionlPDF files in .zip description
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`1
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Re:
`
`Reexamination of US. Pa1entNo. 6,233,389
`Reexam Control No. 90/009,329; Filed: November 10, 2008
`For: Multimedia Time Warping System
`Inventors:
`BARTON et ai.
`Our Ref:
`2513 .UU2REXO
`
`Transmitted herewith for appropriate action is the following document:
`
`1.
`
`Certification of Service on Third Party Requester of Power of Attorney or
`Revocation of Power of Attorney with a New Power of Attorney and Change of
`Correspondence Address.
`
`The above—listed document is filed electronically through EFS-Web.
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`Fee payment is provided through online credit card payment. The US. Patent and
`Trademark Office is hereby authorized to charge any fee deficiency, or credit any overpayment,
`to our Deposit Account No. 19-0036.
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`EJKXLAG:n1lb
`Enclosures
`942278__1 DOC
`
`Attorney for Patent Owner
`Registration No. 25,688
`
`Sterne, Kessier, Gordste-m & Fm: i>.t.l..:.
`
`: 1100 New York Avenue, NW : Washington. DC 20005 : 202.3‘.-'1.26UD I2E)Z.3?1.2540 : www.s|-;gl.com
`
`254
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BARTON er al.
`
`Reexam of Patent No.: 6,233,389
`Reexam Control No.: 90f009,329
`
`Patent Under Reexamination: 6,233,389
`Reexamination Control No.: 90/009,329
`Examiner: Ferris, Fred
`Art Unit: 3992
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`CERTIFICATION OF SERVICE OF POWER OF ATTORNEY OR
`REVOCATION OF POWER OF ATTORNEY WITH A NEW POWER
`OF ATTORNEY AND CHANGE OF CORRESPONDENCE ADDRESS
`
`In compliance with 37 C.F.R. § 1.550(f), the undersigned, on behalf of the patent
`
`owner, hereby certifies that a copy of this paper has been served on the third—party requester
`
`by first class mail on February 18, 2009. The name and address of the party served is as
`
`follows:
`
`David L. F eh:-man
`
`Morrison & Foerster, LLP
`555 W. Fifth Street, Suite 3500
`Los Angeles, CA 90013
`
`Respectfully submitted,
`
`ER
`
`OLDSTEIN & Fox I-".L.L.C.
`
`Attorney for Applicant
`Registration No. 25,688
`
`Date:
`
`Febygg 18, 2009
`
`1100 New York Avenue, NW.
`Washington, D.C. 20005-3934
`(202) 371-2600
`9-1-2269_I .DOC
`
`255
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`

`
`Electronic Acknowledgement Receipt
`
`Application Number:
`
`90009329
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`MULTIMEDIA TIME WARPING SYSTEM
`
`First Named |nven‘or’APP|icant Marne:
`
`Customer N um ber:
`
`29989
`
`Filer:
`
`Lori Ann Gordor-u’Maya Bennett
`
`Filer Authorized By:
`
`Lori Ann Gordon
`
`Attorney Docket Number:
`
`454032800200
`
`Receipt Dale:
`
`Filing Date:
`
`18—FEB—2009
`
`‘I0-NOV-2008
`
`Time Stamp:
`
`16:56:16
`
`Application Type:
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`Reexam (Third Party)
`
`Payment information:
`
`Submitted with Payment
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`Document
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`.
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`Document Descflpmm
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`We Name
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`2513002REXOcer1ificat|onofser
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`Message Digest
`76286
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`vice.pdf
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`a5\.‘J'BJllLI:IL2I IJIIMJ l IIJ5 |ll.r(‘l I I31] l lltibl
`F'Jl‘ltr.ir
`
`Part Lzip (ifappl.}
`
`256
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`

`
`Multipart DescriptionlPDF files in .zip description
`
`Document Description
`
`Miscellaneous Incoming Letter
`
`1
`
`1
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`Ifa new application is being filed and the application includes the necessary components for a filing date [see 37 CFR
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`National Stage of an International Application under 35 U.S.C. 371
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`U.S.C. 371 and other applicable requirements a Form PCTIDOIEOIQOB indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO asa Receiving Office
`lfa new international application is being filed and the international application includes the necessa ry components for
`an international filing date (see PCT Article 11 and MPEP1B10], a Notification of the International Application Number
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`national security, and the dte shown on this Acknowledgement Receipt will establish the international filing date of
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`
`257
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Illllllflflllllllllllllilllllllllflllllllllilllllillllll
`Bib Data Sheet
`
`SERIAL NUMBER
`9g,rgog.329
`
`‘ PPL|CANTS'
`
`FILING OR 371(c}
`DATE
`1 111012008
`RULE-
`
`I
`
`UNITED STATE DEPARTMENT OF CONCMERCE
`United Slulun Pnl-out nlld Trademark Uffim:
`Adxln-uC0loDUIl$SlO?\7ER FOR PATIENTS
`1‘-‘.0. Bum luu _
`AJenndI"tl.Vw3u:i: 12313-use
`wrwnlpnagzr
`connruwnmou No. 2359
`
`GROUP ART UNIT
`3992
`
`ATFORN EY
`DOCKET NO.
`454032800200
`
`6233389, Residence Not Provided;
`TIVO, lNC.(OWNER), SUNNYVALE, CA;
`DISH NETWORK CORPORATlON(3RD.PTY.REQ.), ENGLEWO0D_ CO;
`MORRISON & FOERSTER LLP. LOS ANGELES, CA
`
`i
`
`Iiitt-kt-Iktiiiiiifttitllli
`
`This application is a REX of DQI1 26,071 07!30l1998 PAT 6233.389
`
`FOREIGN APPLICATIONS *"*"""""*‘“""""'“'
`
`Foreign Priorixy claimed
`
`U was I: no
`
`' DDRESS
`I’ 61 11
`
`ITLE
`
`MULTIMEDIA TIME WARPING SYSTEM
`
`F|L|NG FEE FEES: Authority has been given in Paper RECEIVED No.
`to charge/credit DEPOSIT ACCOUNT
`time i
`.T for following:
`0
`
`Cl 1.16 Fees ( Filing)
`
`258
`
`

`
`UN]'l‘ED STATES PATENT AND TRADEMARK OFFICE
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`lJ:'Nl'|‘ICT1 ‘.‘i"|‘-\'l‘ITS |‘Jl*IP-\Il”I‘fl-lI‘3*~"I' FIII‘ (TIM M I". Rf‘!-f
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`STEHNE, KESSLER. GOLDSTEIN & FOX P.L.L.C.
`11oo NEW YORK
`NW.
`WASHINGTON, DC 20005
`
`milliunimlIllfiljlllilgiiiililuigiilrIiilliiililrlll
`Date Mailed: 02/23/2009
`
`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 0211812009.
`
`The Power of Attorney in this application is accepted. Correspondence in this application will be mailed to the
`above address as provided by 37 CFR 1.33.
`
`isdslcvclisulil
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`259
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`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`HICKMAN PALERMO TRUONG 8: BECKER, LLP
`2055 GATEWAY PLACE
`SUITE 550
`SAN JOSE, CA 95110
`
`miiiiiniiiiilifiiiiiiiigiiiiiiiuigiilgiiiiiimiiiiii
`
`Date Mailed: 02f23/2009
`
`NOTICE REGARDING CHANGE OF POWER OF A'|'|'0RNEY
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`This is in response to the Power of Attorney filed 02/18112009.
`
`- The Power of Attorney to you in this application has been revoked by the assignee who has intervened as
`provided by 37 CFR 3.71. Future correspondence will be mailed to the new address of reoord(37 CFH 1.33).
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`J.«:Llsievu1iso11/
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200. or 1-888-786-0101
`
`260
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`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Re:
`
`Reexamination of U.S. Patent No. 6,233,389
`Reexam Control No. 90/009,329", Filed: November 10, 2008
`For: Multimedia Time Warping System
`Inventors:
`BARTON er of.
`Our Ref:
`2513.002REXO
`
`Transmitted herewith for appropriate action is the following document:
`
`1.
`
`Petition of Patent Owner Under 35 U.S.C. § 181, 182, andlor 37 C.F.R. 1.183 to
`Vacate the Order Granting Second Reexamination Request;
`
`Certification of Service of Petition of Patent Owner Under 35 U.S.C. § [81, 182,
`audio!‘ 37 C.F.R. 1.183 to Vacate the Order Granting Second Reexamination
`Request;
`
`Petition of Patent Owner under 37 C.F.R. § 1.182 to Temporarily Suspend Ex
`Purte Reexamination Proceeding;
`
`Certification of Service of Petition of Patent Owner under 37 C.F.R. § 1.132 to
`Temporarily Suspend Ex Pa;-re Reexamination Proceeding; and
`
`Online Credit Card Payment Authorization for $800.00 to cover two (2) petition
`fees.
`
`The abovc—Iistcd documents are filed electronically through EFS-Web.
`
`‘.~-*2'ne, fI9.<sJer. Golrlsmr 3- tr-:< out
`
`: 1100 New York Avenue, NW : Washington, DC 20005 : 2fl2.33"!.2EfllJ -‘2D2.3?t.254lJ : nu"-I-.u,skgf,:on'r
`
`261
`
`

`
`Commissioner for Patents
`
`May 27, 2009
`Page 2
`
`Fee payment is provided through online credit card payment. The U.S. Patent and
`Trademark Omce is hereby authorized to charge any fee deficiency, or credit any overpayment,
`to our Deposit Account No. 190036
`
`'2-‘
`
`.- LDST'E.1]'-I & Fox P.L.L.C.
`
`Ward J. Kess er
`
`Attorney for Patent Owner
`Registration No. 25,688
`
`EJK/LAG:rrflb
`Enclosures
`9a41z5__1.Doc
`
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`1 1100 NEW York Avenue, NW 1 Washington, DC 20005 T 202.371.2500 H02 371.2540
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`262
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re reexam of: U.S. Patent 6,233,389
`(Barton)
`
`Confinnation No.: 2859
`
`Reexam Control No.: 90f009,329
`
`Art Unit: 3992
`
`Filed: November 10, 2003
`
`Examiner: Ferris, Fred
`
`For: Multimedia Time Warping System
`
`Atty. Docket No: 2513.0D2RBXD
`
`PETITION OF PATENT OWNER
`
`UNDER 35 U.S.C. § 181, 182, AND/OR 37 C.F.R. § 1.133 T0 VACATE THE ORDER
`GRANTING SECOND REEXAIVIINATION REQUEST
`
`Commissioner for Patents
`P.0. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`TiVo 1110., ("TiVo") the owner of U.S. Patent 6,233,389 (the '389 patent) petitions the
`
`Director, under 37 C.F.R. §§ 1.131 and/or 1.182, to vacate the January 7, 2009 Order
`
`Granting the Second Request for Ex Pane Reexamination (the "Second Order") filed by Dish
`
`Network Corporation, formerly EchoStar Cominunications Corporation‘. The reexamination
`
`statute allows for the grant of a reexarnination only when the request establishes a substantial
`
`new question of patentability. 35 U.S.C. §§ 302-303. To establish a substantial new question
`
`of patentability, a reexamination request must demonstrate that the proposed question of
`
`patentability is different
`
`from and non-cumulative to questions
`
`raised in previous
`
`examinations. MPEP § 2216. Additionally, when the request relies on a previously
`
`considered reference,
`
`the request must
`
`include evidence that
`
`the previously considered
`
`reference is being presented in a "new light." That is, the request must present substantial
`
`evidence that the previous Examiner did not properly understand the reference or did not
`
`For ease of discussion, both Dish Network Corporation and EchoStar
`'
`Communications Corporation are referred to herein as "EchoStar. "
`
`263
`
`

`
`consider a portion of the reference in making the prior decision on patentability. HR. Rep.
`
`107-120, p. 3.
`
`EchoStar's Second Request for reexamination was based solely on two references that
`
`were considered in the first reexamination. EchoStar, however, failed to meet its burden of
`
`showing how the question of patentability raised in the second request was different from and
`
`non-cumulative to those raised in the previous examination of the '389 patent. Additionally,
`
`Echostar failed to meet is burden of providing substantial evidence that the Exarniners in the
`
`previous examination proceedings did not properly understand the previously considered
`
`references presented in the second request. By granting the Second Request, which lacked a
`
`showing of a substantial new question of patentability,
`
`the United States Patent and
`
`Trademark Office ("the Office") took an action that negated the protections guaranteed to
`
`TiVo under 35 U.S.C. § 303. As such,
`
`the Order granting the Second Request
`
`for
`
`Reexamination was ultra vrres and must be vacated.
`
`The present petition goes to the jurisdiction of the Office to order reexamination of
`
`the ‘389 patent based on the November 10, 2003 request for reexamination. Because subject
`
`matter jurisdiction may be raised at any time, the provision of 37 C.F.R. § 1.181(1) limiting
`
`the time period for filing a petition in response to an action or notice from which relief is
`
`requested is not applicable to the present petition. See Fanning 22‘ at v. West, Secretary of
`
`Veterans Afiairs, 160 F.3d 717, 720 (Fed. Cir. 1993)("A party, or the court sua sponte, may
`
`address a challenge to subject matter jurisdiction at anytime, even on appeaI."); see also In re
`
`Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (existence of a substantial new question of
`
`patentability raised for the first time in response to the first Oflice Action.)
`
`Although TiVo does not believe that a waiver of 37 C.F.R. § 1.181 (f) is necessary for
`
`the Office to consider the present petition on its merits, it is respectfully requested that a
`
`264
`
`

`
`waiver of 37 C.F.R. § 1.l31(t) under 37 CPR. § 183 be granted ifthe Office deems such to
`
`be necessary.
`
`I. PERTINENT FACTS
`
`PTO Proceedings
`
`1. U.S. Patent No. 6,233,389 (“the ‘389
`patent” ,
`entitled
`“Multimedia Time
`Warping System” was filed on July 30,
`1998 and issued on May 15, 2001. The
`term of the ‘339 patent expires on July
`30, 2013.
`
`. On October 17, 2005, EchoStaI filed a
`request
`for ex parre reexamination of
`claims 1, 6, 20, 21, 23, 32, 37, 51 and 52
`of the ‘389 patent.
`
`_ On December 15, 2005, the request for
`reexamination was granted and assigned
`Control No. 90/007,750.
`In the Order
`Granting
`Request
`for
`E76
`Perle
`Reexamination
`(“First Order” ,
`the
`Examiner sua sponte examined all claims,
`including claims 31 and 61, expressly
`stating
`that
`"All
`claims will
`be
`reexamined." (See First Order, p. 12.)
`
`proceeding was
`reexamination
`The
`conducted by Examiner Harvey and
`Examiner Escalante
`of
`the Central
`Reexamination Unit.
`
`2. On January 5, 2004, TiVo filed suit
`against
`EchoStar
`Communications
`Corporation in the United States District
`Court for the Eastern District of Texas,
`Marshall Division, Til/D Inc. v. EcF1oStnr
`Communications Corporation, at at, Civ.
`No. 2:2004CV-00001, for infringement of
`the ‘Z389 patent.
`
`the jury
`5. Following a trial on the merits,
`awarded TiVo damages totaling nearly
`$74,000,000.
`The jury and the Court
`rejected EchoStar's
`invalidity defenses.
`The jury verdict was filed on April 13,
`2006. On August 17, 2006, the District
`Court entered judgment on the merits and
`issued a permanent
`injunction against
`Ecl1oSta.r. EchoStar appealed to the Court
`
`265
`
`

`
`of Appeals for the Federal Circuit.
`
`6. On May 25, 2006, the Examiner issued a
`first, non-final Officc action (“the First
`Ofiice Action"). The first Office Action
`discussed, on the record, over two dozen
`prior art documents, including US. Patent
`Nos. 5,949,948 and 6,304,714 to Krause_
`Additionally,
`the first Office Action
`stated with respect to claims 31 and ti],
`“[t]he prior art of record does not show
`or
`suggest
`an
`object-based
`methodfapparatus that
`is recited in
`claims 31 and 61.”
`
`. On November 28, 2007, the Office issued
`a Notice of Intent
`to Issue Ex Parte
`Reexamination Certificate (“NIRC”).
`In
`the NIRC,
`it was again stated that
`“[T]he prior art of record does not
`Show or
`suggest
`an
`object-based
`methodfapparatns that
`is
`recited in
`claims 31 and 61."
`
`8. 111 a decision dated January 31, 2003, the
`Federal Circuit upheld the decision of the
`District Court with respect to claims 31
`and 61, the claims at issue in the Second
`Request. Among other things, the Federal
`Circuit
`rejected EchoStar's
`invalidity
`arguments. The Federal Circuit denied
`Ech0Star’s petition for a rehearing and for
`a rehearing en banc on April 1], 2008.
`The United States Supreme Court denied
`EchoStar’s petition for a writ on ccrtiorari
`on October 6, 2008.
`
`.Fol1owing the decision by the Federal
`Circuit,
`the parties conducted a status
`conference on May 30, 2008 with the
`District Court Judge in the Texas litigation
`concerning EchoStar‘s alleged attempts to
`design around the claims of the '3 39 patent
`and TiVo's request for a determination of
`contempt on the part of EchoStar. Less
`than an hour after the status conference
`
`concluded, EchoStar (now known as Dish
`Network Corporation) filed a declaratory
`judgment action in Delaware concerning
`the same patent. The co-pending litigation
`in the United States District Court for the
`
`District of Delaware
`
`is
`
`styled DISH
`
`266
`
`

`
`10. On November, 10, 2008, EchoStar filed
`the second request for reexarnination of
`the ‘389 patent, directed solely to claims
`31 and 61 (Control No. 90/009,329).
`
`_ On November 11, 2008, a reexamination
`certificate issued for the ‘389 patent in
`which all patent claims (including patent
`claims 31 and 61) were confirmed as
`being patentable, without amendment.
`
`. On January 7, 2009, by the Second Order,
`reexamination was ordered by CRU
`Primary Examiner Fred Ferris. An SNQ
`for claims 31 and 61 was alleged to exist
`only on the basis of the Krause and
`Thomason patents. Specifically, the SNQ
`was alleged to be that “[C]]airns 31 and
`61 are obvious under § 103{a) in View of
`Thomason
`et
`al
`(US. Patent No.
`6,081,612 and submitted herewith as
`Exhibit 2) and Krause et 211.
`(11.5. Patent
`No. 5,949,948 and submitted herewith as
`Exhibit 3.)
`
`Network Corporation er al. v. TWO Inc,
`Case No. 1:08-CV—00327—JJF. A decision
`
`on transfer to E.D. Texas is pending.
`
`13. On February 17-19, 2009. the Court in
`the Eastern District of Texas held an
`
`evidentiary hearing regarding TiVo's
`motion that EchoS1ar be held in contempt
`of the Court's injunction. The Court took
`the matter under
`submission and a
`
`decision is pending.
`
`267
`
`

`
`The dispute between TiVo and EchoStar has been pending for many years. EchoStar has
`
`done everything it can to multiply the proceedings in an effort to continue its disrespect of
`
`TiVo's patent rights. EchoSta.r's Second Request is yet one more attempt to burden and
`
`harass TiVo, and to place a cloud over its patent.
`
`I-3choStar's efforts should not be tolerated,
`
`especially without a showing that the Second Request meets the "substantial new question"
`
`threshold.
`
`II.
`
`DISCUSSION
`
`A. Congress Enacted the Substantial New Question Provision of Section 303 to
`Prevent Harassment of a Patent Owner
`
`The ex par-re reexamination statute (Public Law 96-517) was "part of a larger effort to
`
`revive United States industry's competitive vitality by restoring confidence in the validity of
`
`patents issued by the PTO." Patiex v. Mossinghofi”, 758 F.2d 594, 601 (Fed. Cir. 1985). Such
`
`confidence, however, cannot be restored by permitting scriatim reexaminations that place a
`
`cloud over a patent for significam portions of its life without strictly imposed limitations.
`
`Congress, as a result, ensured that the rights of patentees are protected during reexamination
`
`proceedings.
`
`"As part of the original 1980 reexamination statute, Congress struck a balance
`
`between curing allegedly defective patents and preventing the harassment of patentees.
`
`It
`
`adopted a standard requiring a request for reexamination to raise a ‘substantial new question
`
`of patentabiIity."‘ See H.R. Rep. No. 107-120, at 1; See also In re Recreative Technologies,
`
`83 F.3d 1394, 1397 (Fed. Cir. 1996). Congress Lhus enacted 35 U.S.C. § 303 requiring the
`
`Commissioner to "determine whether a substantial new question of patentability affecting any
`
`claim of the patent concerned is raised by the request." This provision was intended to limit
`
`reexamination only to "new information about pre—existing technology which may have
`
`268
`
`

`
`escaped review at the time of the initial examination of the application." See H.R. Rep. No.
`
`96-1307, 96"‘ Cong., 2d Sess. 3 (1980).
`
`The legislative record makes it abundantly clear that an important purpose of 35
`
`U.S.C. § 303 is the protection of the patent owner:
`
`[The statute] carefully protects patent owners from reexamination
`proceedings brought for harassment or spite. The possibility of
`harassing patent holders is a classic criticism of some foreign
`reexamination systems and we made sure it would not happen here.
`
`Comments by then PTO Commissioner Diamond, Industrial Innovation & Potent &
`
`Copyright Law Amendments: Hearings on HR. 6933, 6934, 3806, & 214 Before the
`
`Sobcomm. On Courts, Civil Liberties and the Administration of Justice of the House Comm.
`
`On the Judiciary, 96*‘ Cong., 2d Sess. 594 (1980).
`
`requirement would protect
`"substantial new question"
`This
`patentees fiom having to respond to, or participate in unjustifiecl
`rcexatninations.
`
`Report by Congressman Kastenrneier, H.R, Rep. No. 1307 (part I), 963"‘ Cong., 2d Sess. 7
`
`(1930).
`
`safeguards in the proposed reexamination
`Because of the
`procedure, it is unlikely that there will be any substantial amount of
`harassment
`The Commissioner must find that "a new question
`of pate-ntability"
`has
`been created
`before
`ordering a
`reexamination.
`
`Comments by Robert Benson on behalf of the American Bar Association, Patent and
`
`Trademark Law Amendments of 1980: Hearings on HR. 6933 Before the Subcomm. Of the
`
`House Comm. On Government Operations, 96” Cong., 2d Sess. 178 (1930).
`
`In light of a perceived overly strict interpretation by the Federal Circuit, Congress
`
`amended § 303 in 2002 to state that "[t]he existence of a substantial new question of
`
`patentability is not precluded by the fact that a patent or printed publication was previously
`
`cited by or to the Office or considered by tho Of'fice_" H.R. Rep. No. 107-120, at 2, 7.
`
`269
`
`

`
`Nevertheless, this amendment was not in any way intended to remove the "substantial new
`
`question" standard.
`
`In fact, Congress stressed that "[W]hile this bill clarifies the basis for a
`
`reexamination determination and removes the overly—strict bar established by the court,
`
`which renders the available process useless in many obvious instances such as with
`
`previously considered 1J1‘ior art, the courts should judiciously interpret the ‘substantial new
`
`question‘ standard to prevent cases of abusive tactics and harassment of patentccs through
`
`reexamination." Id., at 3. Congress further cautioned that the 2002 bill was "not a license to
`
`abuse patentees and waste the life of a patent."
`
`Id., at 3. The "substantial new question"
`
`standard must continue to be strictly enforced, especially when considering art that was
`
`already of record in prior examinations.
`
`B. The Manual of Patent Examining Procedures (MPEP) Requires that a Third
`Party Requester Show How a "Substantial New Question" Raised in a Request
`Is Substantially Different From Those Raised in Prior Examination.
`
`The Manual of Patent Examining Procedures (MPEP) describes the procedures for the
`
`PTO determination of whether a "substantial new question of patentability" has been raised.
`
`See MPEP § 2216. Specifically, MPEP § 2216 requires that the reexamination request "must
`
`point out how any questions of patentability raised are substantially different from those
`
`raised in the previous examination of the patent before the Office." MPEP § 2216.
`
`(emphasis added). Any difference is not sufficient. The differences must be substantial.
`
`LIPEP § 2216 further requires that "[i]t must first be demonstrated that a patent or printed
`
`publication that is relied upon in a proposed rejection presents a new, non—ct1mulative
`
`technological teaching that was not previously considered and discussed on the record during
`
`the prosecution of the application that resulted in the patent for which reexamination is
`
`requested, and during the prosecution of any other prior proceeding involving the patent for
`
`which reexamination is requested." Id.
`
`270
`
`

`
`Thus, MPEP § 2216 places the burden on the third party requester to demonstrate that
`
`the questions of patentability raised are substantially different than those raised in previous
`
`examinations. This procedure is consistent with the legislative history:
`
`The party requesting the reexamination would have the burden of
`convincing the Commissioner of Patents that a new question of
`patentability has been raised
`
`Comments by Robert Benson on behalf of the American Bar Association, Patent and
`
`Trademark Law Amendments of I980: Hearings on HR. 6933 Before the Subcomm. Of the
`
`House Comm. Or: Government Operations, 96'“ Cong, 2d Sess. 178 (l930}(en'tphasis added).
`
`This burden cannot and should not be shifted to the patentee.
`
`C.
`
`EchoStar Failed to Meet Its Evidentiary Burden.
`
`In the Second Request for Reexamination of the '389 patent, EchoSta.r failed to meet
`
`its burden of demonstrating how the questions of patentability raised in this reexamination
`
`request differed substantially fi'on1 those raised in previous examinations. Accordingly. the
`
`Order granting EchoStar‘s Second Request was ultra wires, and must be vacated.
`
`On October 17, 2005, EchoStar filed a first reexamination request (the “First
`
`Request") against the '3 89 patent. The First Request sought reexamination of claims 1, 6, 20,
`
`21, 23, 32, 27, 51, and 52. Reexamination was ordered by the Office on December 15, 2005
`
`(See Reexamination Control No. 90/007,750).
`
`In its Order Granting Request for Ex Parts
`
`Reexam