Legal

Unified Patents Inc.’s Real Party-in-Interest and Discretionary Decisions

For the past nine years, across more than 250 inter partes, post-grant reviews, and other forms of administrative challenge, Unified Patents, LLC has won every real party-in-interest (RPI) challenge, both at institution, final written decision, and on appeal. It has also won all Fintiv related discretionary arguments and all Arthrex remands, as detailed below.

Unified’s status as the sole RPI was challenged in its first IPR where the Board held that Unified was the sole RPI. Unified Patents Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 9 (Mar. 21, 2014) (members were not found to be RPIs, where there was no evidence of funding or control of the particular IPR; challenged claims were later cancelled in a Final Written Decision issued April 26, 2015). As catalogued below, Unified overcame every such challenge in the proceeding years. As a result, many times Unified’s RPI status was no longer being challenged. 

In 2018, the Federal Circuit had their first and (possibly only) opportunity to review the Board’s developing RPI jurisprudence in a case involving a different membership organization. That opinion endorsed the Board’s longstanding RPI test set forth in the Trial Practice Guide, but outlined facts particular to that situation (including a potential time-bar) and characteristics of that different membership organization that merited further scrutiny on remand. See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (July 9, 2018) (“AIT”). It remanded for further fact finding but was troubled with the presence of a time bar, lengthy communications with the barred party (who had unsuccessfully challenged the patent previously), and with the RPX business model of acting as a third-party middleman for settlement negotiations.  

The AIT decision led to additional challenges to Unified’s RPI status.  In every ruling following the AIT decision, Unified was again found to be the sole RPI, without exception. 

Then in May of 2020, the Federal Circuit held that 35 U.S.C. § 314(d) precludes judicial review of the Board’s RPI determinations under 35 U.S.C. § 312 entirely, see ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020), extending the Supreme Court’s holding earlier that year that 35 U.S.C. § 315 time bar determinations were likewise unreviewable, Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020), thus foreclosing most direct judicial review of Board RPI determinations, making it unlikely that the Federal Circuit will review or alter future board determinations. It later held that appeals on RPI in Unified cases were likewise unreviewable. See Fall Line Patents, LLC v. Unified Patents, LLC, No. 2019-1956 (Fed. Cir. July 28, 2020), remand denied, Paper 49 (PTAB Nov. 6, 2021). 

Shortly thereafter, the Board finally ruled on the remanded Applications in Internet Time, LLC v. RPX Corp. case, finding that, based on the facts of RPX, including a potential time bar, extensive pre-filing communications, a previous failed challenge, and the unique business model of RPX, they were a real party-in-interest acting at the behest of a time-barred party, and terminated the case. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (“AIT Remand”). The Board termination applied existing orders, precedent, and case law to this ‘highly fact-dependent question,’ including all of the preexisting cases finding no problems with Unified’s business model and consistent approach. AIT, 897 F.3d at 1342 (citations omitted). 

Every panel to decide the issue thereafter has found that Unified’s business model is fundamentally different than RPX’s. Panels have noted that, contrary to RPX, which seeks to extricate clients from litigation by negotiating on behalf of defendants and acting as an “intermediary between patent owners and operating companies,” AIT Remand, 11-15, Unified is no dealmaking middleman, and “acts independent of its members or any other company.” It has found that neither the manner of how Unified selects cases nor the business model itself render any members RPIs, and the Board has repeatedly distinguished facts as they apply to Unified.  See, e.g., Velos Media, LLC, IPR2019-00707, Paper 55 (Sept. 3, 2020); Velos Media, LLC, IPR2019-00635, Paper 45 (Aug. 18, 2020); American Patents, LLC, IPR2019-00482, Paper 115 (Aug 13, 2020); Barkan Wireless, Inc., IPR2018-01186, Paper 57 (Dec. 4, 2019).

Additionally, the same day the Board rules the AIT Remand decision precedential, it likewise designated as precedential the case of SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (“SharkNinja”). That case holds that “no real party-in-interest analysis is necessary at the institution phase absent an allegation of a time bar or estoppel under 35 U.S.C. § 315.” See Unified Patents, LLC v. Fat Statz LLC, IPR2020-01665, Paper 19 (Apr. 16, 2021) (institution). In all subsequent Unified decisions, the Board has determined that no RPI analysis was necessary, either at institution or at final written decision, absent a time bar. See, e.g., Unified Patents, LLC v. Justservice.net LLC, IPR2020-01258, Paper 18 (Feb. 18, 2021) (institution) (“we need not address whether a party is an unnamed RPI unless the time bar or estoppel provisions under 35 U.S.C. § 315 would be implicated”). 

​​Additionally, no Unified petition has been denied under the Board’s expanded understanding of their discretionary denial powers adopted in 2017. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 9–10, 16 (Sept. 6, 2017) and Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020). See also Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A) (instructing the Board to take a “holistic view” of the factors and declining to deny institution). 

Indeed, in every post-grant challenge that has raised arguments related to these discretionary denials, the Board has ignored or declined patent owner arguments that General Plastic or Fintiv applies. See, e.g., Unified Patents, LLC v. Oceana Innovations LLC, IPR2020-01463, Paper 11 (Feb. 23, 2021) (“We agree with Petitioner that the General Plastic factors weigh against denying an inter partes review under the circumstances here”). 

Lastly, Unified has not lost a Director review request under Arthrex. See Smith & Nephew Inc. v. Arthrex Inc., No. 19-1452 (U.S. June 21, 2021) (remanding then-pending appeals to allow for requests for Director review); see, e.g., Fall Line Patents, LLC v. Unified Patents, LLC, IPR20 (Fed. Cir. 2020) (remanding), request for review denied, Paper 49 (Nov. 6, 2021).

As catalogued below, Unified has been distinguished from AIT in every decision following that decision and the remand. The PTAB has thoroughly reviewed this issue in numerous cases when confirming that Unified was the sole RPI.

Exemplary “Discretionary” Institution Decision

  • Institution over arguments related to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”), with four parallel district court proceedings in the Western District of Texas’s Waco Courthouse before Judge Alan Albright scheduled near to the statutory final written decision. Finding that the ersatz trial dates scheduled were likely to shift, and discounting scheduled “earliest possible” trial date for some later “actual trial date” (emphases in original). Additionally, noting the merits as “strong,” thus favoring institution. See Unified Patents, LLC v. NavBlazer, LLC, IPR2020-00983, Paper 11 (PTAB Dec. 16, 2020).

Post-AIT Decisions

  • Federal Circuit opinion finding the Board’s decision that Unified Patents was the sole RPI (and cancelling all challenged claims) unreviewable in light of ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020) (nonprecedential), and remanding for Arthrex proceedings (subsequently denied by the Director’s office without comment). Fall Line Patents, LLC v. Unified Patents, LLC, No. 2019-1956 (Fed. Cir. July 28, 2020), remand denied, Paper 49 (PTAB Nov. 6, 2021). 

  • Board final written decision holding Unified had properly identified the real parties in interest, rejecting arguments that all zone members should all be named. Holding that “Patent Owner … has not identified an aspect of Petitioner’s business structure that we view as showing the alleged unnamed real parties in interest are clear beneficiaries with respect to this proceeding that have a preexisting, established relationship with Petitioner.” Unified Patents, LLC v. Velos Media, LLC,, IPR2019-00707, Paper 55 (PTAB Sept. 3, 2020) (final written decision) (cancelling claims and denying motion to amend). 

  • Final written decision holding that all RPIs had been properly named, rejecting arguments that several members of Unified’s Video Codec zone should have been named; noting that, absent any allegation that any of the RPIs “would have barred the Petition under 35 U.S.C. § 315,” Board did not need to reach the issue, but reaching it favorably nonetheless. Unified Patents, LLC v. Velos Media, LLC, IPR2019-00763, Paper 48 (PTAB Sept. 29, 2020) (final written decision). 

  • Institution and later final written decision holding that the general benefit a member may receive from Unified’s petition does not make the member an RPI. In addition, evidence that a company is a corporate affiliate of a Unified member is not by itself sufficient to place RPI in dispute; that decision was affirmed on Final Written decision.

    • Unified Patents, LLC v. American Patents, LLC, IPR2019-00482, Paper 36 (PTAB Aug. 6, 2019) (institution decision); Paper 115 (PTAB Aug. 13, 2020) (“[W]e again are persuaded that the Petition complied with 35 U.S.C. § 312(a)(2) because Member is not an RPI.”).

  • Institution decision holding that Unified is the sole RPI and that the mere fact that a member asserted invalidity using the same prior art in district court after Unified filed its petition is not enough, without more, to show a member is an RPI. 

  • Final decision holding that Unified properly identified all RPIs and that a member “is not an unnamed RPI [. . .] based on any of the following: its membership with Unified; the alleged control over this IPR; or the relationship between [the member] and Unified and the alleged benefit of the IPR to [the member].” 

    • Unified Patents Inc. v. Cellular Communications Equipment, LLC, IPR2018-00091, Paper 69 (PTAB May 22, 2019).

  • Final decision holding that Unified was the sole RPI and that a member’s decision to file its own petition further supports the conclusion that Unified was not acting under the control or direction of the member.

  • Final decision holding that Unified was the sole RPI and a member that may benefit from Unified filing the IPR is not an RPI without showing some other evidence of a specific interest in the particular proceeding. Unified’s business model alone was not enough for a member to be found as an RPI.

  • Final decision holding that Unified’s IPR was not controlled, funded, nor filed at the behest of one of its members. Found that membership fees are used to fund a variety of Unified’s deterrence activities (“Petitioner is not solely an inter partes review-filing entity”) and distinguishing the factors at issue in the AIT decision. “[W]e do not have evidence that Petitioner is representing any particular interest of [a particular member] here. Rather, the evidence shows Petitioner is representing the general interest that all subscribers to Petitioner’s have in mitigating litigation risk from patents in those zones.”

  • Final decision finding that Unified’s status as the sole RPI is not in question because “Petitioner’s members join particular zones [and] Petitioner files IPRs on behalf of those zones[.]”

  • Institution decision holding that Unified properly identified itself as the sole RPI considering that neither no members had control of, provided funding or direction to, or received a specific benefit (e.g., to purposefully circumvent the one year time-bar) from the filing of the petition. 

    • Unified Patents Inc. v. Barkan Wireless IP Holdings, LP, IPR2018-01186, Paper 27 at 15-16 (Jan. 8, 2019).

  • Institution decision holding that the general benefit members received from Unified’s common practice of filing IPRs in relevant technology areas was insufficient to demonstrate a specific benefit as discussed in AIT even when combined with evidence that Patent Owner engaged in licensing discussions with the alleged RPIs prior to Unified’s petition. 

  • Institution decision holding that evidence consisting solely of generic statements from Unified’s web page that generally describe its business, but did not refer to any particular member was insufficient to demonstrate that the petition failed to name all RPIs. 

  • Institution decision rejecting Patent Owner’s argument that all members of Unified’s Content Zone are RPIs, explaining that “there is no evidence that any of Petitioner’s members controlled, directed, or directly financed this proceeding.” 

    • Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 36 at 16-17 (Nov. 27, 2018) (further noting that there was 1) no communication between Unified and any member regarding the petition or underlying litigation involving the patent; 2) no corporate relationships between Unified and members other than the membership agreement; 3) no evidence of a “very significant payment” shortly before Unified filed its IPR; and 4) no evidence that any member desired review of the patent but was time-barred from doing so.).

    • In a precedential decision, the Board has further cited Realtime Adaptive to prohibit overextending AIT to situations that include a general benefit and a relationship with the Petitioner. Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 10 (PTAB Jan. 24, 2019) (precedential) (citing Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 36 at 14–15 (PTAB Oct. 11, 2018)).  

  • Final decision holding that “the evidence shows that Petitioner makes all decisions regarding any inter partes review proceeding, including which patents to challenge, without input from its members, and that Petitioner alone bears all costs of any such proceeding.” 

  • Unified Patents Inc. v. Plectrum LLC, IPR2017-01430, Paper 30 at 9-10 (Nov. 13, 2018); id., Paper 8 (Nov. 14, 2017) (institution decision holding that “[t]he mere fact that members provide payment to Petitioner for a subscription to Petitioner’s services alone is insufficient to show that these members are funding this particular inter partes review.”).

Pre-AIT Decisions

  • Institution decision holding that Unified’s revenue coming from annual membership subscription fees does not make members an RPI even if timing of some of those funds was used to argue that the funds could have been used to file the IPR. “The evidence does not show an obligation on Unified’s part to file inter partes review proceedings on behalf of any member in return for payment, nor does it show that Unified’s members have any control over when and how Unified spends the revenue received from its members.”

  • Final decision holding that, in view of Petitioner’s identification of itself as the sole RPI,  shifted the burden to the patent owner failed to produce sufficient evidence tending to place the RPI issue in dispute. Patent owner produced no evidence and thus never shifted the burden.  

  • Institution decision finding that Unified’s revenue coming from annual membership subscription fees does not make members an RPI even if timing of some of those funds was used to argue that the funds could have been used to file the IPR.  

  • Institution decision finding that RPI arguments not raising specific evidence of communications or direct funding to challenge any specific patent failed; a “mere possibility” of communications related to the selection of patents did not suffice. 

  • Institution decision holding that there must be actual evidence a member exerted control over a particular IPR, not “mere speculation,” to raise a question as to RPI. 

    • Unified Patents Inc. v. Qurio Holdings, Inc., IPR2015-01940, Paper 7 (Apr. 13, 2016) (claims canceled in response to patent owner’s request for adverse judgment).

  • Institution decision declined to investigate RPI, where Unified’s sworn statements were similar to those in the past and no new issues were raised. 

    • Unified Patents Inc. v. TransVideo Elects., Ltd. IPR2015-01519, Paper 8 (Jan. 15, 2016) (claims canceled in response to patent owner’s request for adverse judgment).

  • Institution decision holding that Unified’s members were not RPIs where there was no funding or control evidence relating to a specific IPR, even where Unified only filed IPRs against member-litigated patents. Distinguished from the adverse institution decisions in RPX . v. VirnetX, IPR2014-00171, -00172, -00173, -00174, -00175, -00176, -00177 (PTAB June 5, 2014)

  • Institution decision distinguished Unified from the In re Guan “Trollbusters” inter partes reexam decision cited in the PTAB Trial Practice Guide because Unified members did not “[pick] the patents to be challenged and [provide] funding for the particular proceedings[.]”  

  • Institution decision holding that the timing of Unified’s filing activities being potentially beneficial to particular members or parties did not make such members RPIs.  

  • Institution decision found that Unified’s members were not RPIs because there was no evidence of funding or control of this particular IPR. 

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With Uncertainty Brings Change: A Q3 Look at Fintiv Denials

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The recent introduction of the Restoring the America Invents Act by Senate IP Subcommittee Chair Senator Patrick Leahy and Senator John Cornyn aims, in part, to remove the uncertainty that the precedential Fintiv orders have caused. Looking at the actual number of denials and frequency of the Board’s use of their discretionary line of cases, though, the consistent takeaway is that Fintiv continues to be used in unpredictable, ever-changing ways to deny otherwise-meritorious, timely challenges.

Despite the slight dip in overall filings (and decisions from last year’s also-down filings) so far in 2021, procedural denials are now used nearly 16% of the time, as compared to just 5% in 2016, before Fintiv and related cases were designated precedential. That is a 220% increase. Even with the uncertainty of Arthex over the first half of the year and the overall dip in filing decisions, the USPTO was still not shy about using procedural denials.

Section 314(a) is still being used 73% of the time for procedural denials.

Interestingly, the use of §§ 314(a) and 325(d) has jumped 6% versus last year. This year has seen these two denials 94.5% of the time in terms of overall procedural denials.

Section 314(a) denials are now 12.4% of denials, a very slight increase from last quarter.

Meanwhile, § 325(d) denials are being used 5.7% of the time, slight increase from last quarter.

The NHK Spring/Fintiv framework continues to be the dominant framework for § 314(a) denials with 77 already, 8 shy of the total last used last year.

Fintiv denials continue to be predominantly used in cases with parallel proceedings in the Eastern District of Texas.

That nearly 63% of all Fintiv-cited denials lead to a settlement begs the question of whether the PTAB might have been more effective at resolving unnecessary litigations; it would appear that, by and large, courts are being used to force settlements rather than address the merits of a patent claim.

Even despite the strategy of a given plaintiff, cases in Fintiv-cited denials are averaging almost two years (700 days) for a case to be terminated, no matter the outcome.

Relevantly, comparing the caseload of the PTAB judges versus the Western District of Texas and Judge Albright’s court docket—inarguably the single biggest patent docket for a U.S. district court judge—it becomes apparent that PTAB dockets are far less crowded and the Board has the necessary resources to hear cases efficiently while giving each cases its due attention; for instance, the highest-docketed PTAB judges have around 100-200 cases on their docket currently (with many having just a handful of PTAB cases balanced with ex parte appeals), whereas Albright has had roughly 700 patent and 1,250 total civil cases on his docket—and growing. See Ryan Davis, Albright Says He’ll Very Rarely Put Cases on Hold for PTAB, Law360, May 11, 2021 (6:50 PM EDT) https://www.law360.com/articles/1381597/albright-says-he-ll-very-rarely-put-cases-on-hold-for-ptab (Judge Albright, noting as of may that he has his civil docket has 1,250 cases, roughly 60% of which were patent cases).

This accounts for both having a certain rate of settlement and new filings, and shows a snapshot in time of the total docket of active patent cases. This suggests that even the most favorable comparisons of dockets indicate the PTAB three-APJ panels can devote much more time and many more resources to each individual ground—an observation only magnified by the myriad other issues attendant on a Federal District court judge’s docket in any particular case.

Unified Files Amicus Addressing Manipulation of Venue Rules

On September 28, 2021, Unified filed an amicus curiae brief with the U.S. Court of Appeals for the Federal Circuit in support of a mandamus petition related to what it views as systemic delays in decisions on venue in patent-heavy District Court dockets, and how they are frustrating the Congressional intent of the America Invents Act. The writ, In re: Netflix, was filed by Mark Lemley of Durie Tangri.

Unified is represented by Bill Jenks of Jenks IP and in-house by Jonathan Stroud. Read the amicus below:

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Expansion of AIA would have added $1.5 billion to GDP

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In a new economic study, the Perryman Group has determined that enhancements to the America Invents Act’s post-grant review proceedings and increased use of district court stays would have saved the U.S. economy almost $1.5 billion dollars in gross domestic product (GDP), $712.7 million in personal income, and would have generated upwards of +6,792 job-years of employment between 2014 and 2019. That would have been in addition to the substantial savings realized of almost $3 billion already reported based on the current AIA regime. In other words, it could have been upwards of $4.5 billion of GDP savings, combined. This demonstrates that while the AIA has had a strong positive impact on the U.S. economy, it has fallen short of the benefits it could have accomplished with broader use of stays and a more comprehensive mandate. 

The study found that U.S. manufacturing would have experienced the greatest gains. It analyzed three scenarios: 1) If all court proceedings on a patent were automatically stayed after IPR was instituted, 2) if all invalidity defenses could be asserted in IPR proceedings, and 3) if both expansions had been in place. 

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For 1), automatic district court stays, the Report estimates those changes would have led to an increase in U.S. business activity of an additional $543.1 million in GDP, $259.6 million in personal income, and +2,474 job-years of employment.

For 2), adding all defenses to the process, it estimates that adding those defenses would have led to an estimated $731.3 million additional increase in gross product, $349.5 million in personal income, and +3,331 job-years of employment.

And for 3) both, including multiplier effects, it estimates additional savings of $1.49 billion in gross product, $712.7 million in personal income, and +6,792 job-years of employment, noting that the benefits associated with Scenario Three are greater than the sum of the prior two if implemented separately, as the additional proceedings allowed if all invalidity defenses could be asserted would also benefit from being universally stayed while the IPR process is ongoing. 

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Unified Patent’s Patent Quality Initiative (PQI) previously commissioned a study that demonstrated the substantial financial impact passage of the America Invents Act, and in particular, challenges like inter partes review (IPR), have had on the U.S. economy. That study demonstrated that U.S. businesses and the economy as a whole saved upwards of $2.95 billion dollars in gross domestic product, $1.41 billion in personal income, and generated upwards of +13,500 job-years of employment between 2014 and 2019.  

That study relied on the current AIA regime of post-grant review, where district court stays are inconsistently applied, limited grounds of challenge are available, and in practice—given recalcitrance to stay, confusion in caselaw and regulatory requirements like discretionary denials, and some resulting duplication of efforts between fora—the Congressional goals of providing a true cost-effective alternative to inefficient district court litigation have fallen short. Further study was needed to determine how much could have been saved over the same time period had district courts automatically stayed cases or had more grounds of invalidity been available in IPR.

Indeed, innovation has long been recognized as the key factor supporting U.S. economic growth and competitiveness. A critical element of the infrastructure facilitating product development and commercialization is the system that protects intellectual property and encourages its widespread adoption and implementation. The current framework that facilitates this process includes the Leahy-Smith America Invents Act (AIA) and the Patent Trial and Appeal Board (PTAB). The AIA and PTAB reduce the need for patent litigation, reducing costs and generating substantial economic benefits. Potential expansions of the AIA would lead to additional gains in business activity.

Economic performance in the United States over the long term is tied to innovation. The AIA and PTAB not only support innovation, but also generate substantial economic benefits. These benefits could be even greater with expansion of the AIA. 

The report is part of Unified Patents’ ongoing Patent Quality Initiative (PQI), an effort to gather and provide objective data and research demonstrating how lowering patent quality will inevitably lead to even higher cost and risk for U.S. SMEs, inventors, and manufacturers, and can lead to less innovation, fewer U.S. jobs, and a drain on the U.S. economy. Our PQI aims to provide data, studies, and testimonials to give policymakers and practitioners a clear picture of the state of the patent system. More information about our PQI efforts can be found here.

For far greater detail, read the entire report HERE.

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Express Mobile Patent Narrowed After Ex Parte Reexamination

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At the end of 2020, Unified filed two ex parte reexamination (Reexam) requests against patents owned by Express Mobile Inc., a prolific patent troll that has sued over eighty different companies for website development features. In early August 2021, the Reexam of U.S. Patent 7,594,168 concluded with a “Notice of intent to issue a Reexamination Certificate” that likely impacts Express Mobile’s infringement theories and still leaves open future questions about validity. The examiner narrowed claims that Express Mobile has argued repeatedly in court were much broader. For the first time, you can view every ex parte filing since 2000 on Unified’s Portal here. 

This reaffirms the Northern District of California’s and the Middle District of Florida’s stays of their cases involving the challenged patents. As the notice of intent comes less than one year after the filing of a request, patentees will be hard-pressed to argue that the ex parte reexamination process is too long to wait for a streamlining of their myriad infringement claims—if the patent is valid, it should be more likely that the reexamination will end quickly, and very little burden would be faced by the applicant due to a delay. On the other hand, if the challenged claims are invalid or substantially narrowed past the point of reasonable infringement, it would be a waste of resources to litigate. Additionally, in Express Mobile’s case, had the courts proceeded while the reexamination was still pending, the claim construction briefing would not have had the benefit of Express Mobile’s affirmative, binding disavowal of scope, and the examiner’s basis for allowance, itself probative for claim construction. See, e.g., Salazar v. Procter & Gamble Co., 414 F. 3d 1342, 1347-48 (Fed. Cir. 2005). That is particularly true here, where the examiner concluded that Express Mobile’s references to the specification amounted to a definition, i.e., lexicography. Notice of Intent, pp.7-8.

And the Office went further.  For example, the examiner observed that if any non-object oriented formatting or styles are used in the building of a web page, it would not infringe the ’168 Patent. Id., p.4. Express Mobile disagreed with the Examiner for construing “entirely” as “only” in Claim 1, but its arguments beg the question of what “entirely” does mean, if not “only,” and whether Express Mobile has a viable infringement case based on the proper construction of this term.

Additionally, it will not be enough for Express Mobile to argue vague notions of what a timeline or transformation of a style is anymore: the transformation of an image object is limited to the description at (c), the transformation of a button object is limited to the description at (g) the timeline of both image and button objects is limited to examples at (d), and the claims specify that these settings are required for an image or button object for “each” web page on the site.  Id., 5-6; see also ’168 Patent, 30:32-33:46. It is unclear whether any of the pending product accusations meet these requirements.

And while Express Mobile filed a nonbinding statement disagreeing with the examiner’s characterizations, such post hoc self-serving statements are entitled to little weight, although they keep the interpretation open for an invalidity litigant or IPR petitioner construing the claims as broadly as Express Mobile. For example, Express Mobile disagreed with the examiner that the statements regarding image and button objects are definitional, citing the specification’s use of “can” instead of “must.” ’168 Patent, 30:32-33:46. This does not respond to the examiner’s point; “can” is not necessarily synonymous with “may,” and it should indicate limitation if the list refers to the only settings the user could employ. Here, Express Mobile’s points to no language that indicates that the “can” is exemplary and not limiting, as the examiner concluded.

The certificate also does not absolve Express Mobile of the need to address invalidity in its pending cases. The Notice made it clear that if a reference was not cited in its actions, then it was only given a cursory review, and no references other than the art submitted with the request appear to have been addressed by the examiner. Notice of Intent, 3.

Reexaminations are a valuable tool, particularly with Fintiv lingering. The Reexamination Unit has recently been processing requests much faster than the past, making their use to obtain stays a prudent option.  Reexaminations are also a less expensive option (and sometimes faster way) to extract claim scope disavowals and highlight infringement theory weaknesses even though there is little control over what the examiner considers.