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EXHIBIT A

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Patent Examining Activity PATENT APPLICATIONS FILED

Table 5 SUMMARY OF PATENT EXAMINING ACTIVITIES (FY 1989 - 1993) 1989 1990 150,418 495 418 11,975 163,306 11,734 136,722 3,758 7,363 98,472 105,835 2,555 47,218 49,773 185 155,793 1,315 162,708 468 395 11,140 174,711 13,693 149,425 4,644 9,679 96,672 106,351 3,991 45,750 49,741 177 156,269 2,168 88,974 282 295 7,176 96,727 3,476 18.3 297 224 4,218 7,216 5,143 2,298 49,539 12,060

1991 166,765 536 414 10,368 178,083 15,503 158,319 5,680 10,394 102,014 112,408 4,427 53,703 58,130 142 170,680 4,014 91,822 334 318 9,386 101,860 4,854 18.2 307 200 6,000 9,158 6,247 3,774 73,954 19,134

1992 171,623 581 335 12,907 185,446 16,076 165,294 7,247 11,013 103,093 114,106 4,843 59,199 64,042 278 178,426 5,010 99,405 375 336 9,612 109,728 4,781 19.1 392 243 6,586 10,929 6,835 4,678 107,713 28,603

1993 173,619 572 362 13,546 188,099 16,074 171,799 7,459 11,800 104,351 116,151 4,681 60,763 65,444 146 181,741 5,851 96,676 302 408 9,946 107,332 5,778 19.5 359 293 8,714 12,389 7,441 5,955 114,367 38,475

Utility1 ......................................................................... Reissue....................................................................... Plant ........................................................................... Design ........................................................................ Total Patent Applications Filed............................ FIRST ACTIONS Design ........................................................................ Utility, Plant, and Reissue........................................... PCT/Chapter 1 ........................................................... PATENT APPLICATIONS ALLOWED2 Design ........................................................................ Utility, Plant, and Reissue........................................... Total Patent Applications Allowed....................... PATENT APPLICATIONS ABANDONED Design ........................................................................ Utility, Plant, and Reissue........................................... Total Plant Applications Abandoned ................... OTHER PATENT APPLICATIONS DISPOSED Statutory Invention Registrations ............................... TOTAL PATENT APPLICATION DISPOSALS........................... PCT/CHAPTER II EXAMINATIONS COMPLETED ................... PATENTS ISSUED3

Utility ........................................................................... 95,831 Reissue....................................................................... 309 Plant ........................................................................... 728 Design ........................................................................ 5,844 Total Patents Issued ........................................... 102,712 ALLOWED APPLICATIONS, ISSUE FEE NOT PAID4 .............. 3,285 PENDENCY TIME OF AVERAGE PATENT APPLICATION5 ..... 18.4 REEXAMINATIONS REQUESTED6 .......................................... 243 REEXAMINATION CERTIFICATES ISSUED6........................... 206 7 ................................... PCT SEARCH REPORTS PREPARED 3,469 PCT INTERNATIONAL APPLICATIONS RECEIVED BY USPTO AS RECEIVING OFFICE7 ................................ 5,599 NATIONAL REQUIREMENTS RECEIVED BY USPTO AS RECEIVING OFFICE7 ................................ 4,355 INTERNATIONAL PRELIMINARY EXAMINATION REPORTS . 933 PATENTS RENEWED UNDER P.L. 102-2048........................... 52,687 PATENTS EXPIRED UNDER P.L. 102-2048 ............................. 12,416
1 2 3 4 5 6 7 8

Chemical, electrical, and mechanical applications. "Allowed Patent Applications" are applications awaiting issuance (i.e., publication) as patents. Excludes withdrawn numbers. 35 U.S.C. § 151. Average time (months) between filing and issuance/abandonment of utility, plant, and reissue applications (excluding designs). Reexamination was instituted on July 1, 1981, in accordance with provisions of P.L. 95-517. PCT entered into force on January 24, 1978, and applications were accepted for filing beginning June 1, 1978. Renewal of patents under P.L. 96-517 and P.L. 97-247 now superseded by P.L. 102-204.

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STATUTORY INVENTION REGISTRATIONS PUBLISHED (FY 1989 - 1993) Assignee 1989 1990 1991 Agriculture ........................................... 0 0 0 Air Force.............................................. 25 11 14 Army .................................................... 33 38 35 Energy................................................. 21 14 17 HEW/HHS ........................................... 0 0 1 Navy .................................................... 16 14 11 TVA ..................................................... 1 0 0 USA* ................................................... 0 1 4 Other Than U.S. Government ............. 58 62 63 Total ............................................. 154 141 145
*United States of America - no agency indicated in database.

1992 1 9 25 11 0 20 2 6 66 140

1993 0 7 26 9 0 13 0 2 67 124

Table 11 REEXAMINATION1 (FY 1989 - 1993) 1989 REQUESTS FILED By patent owner ......................................... By third party .............................................. Commissioner ordered ............................... Total .................................................... DETERMINATIONS ON REQUESTS Requests granted By examiner ........................................ By petition ........................................... Requests denied ........................................ Total .................................................... REQUESTS KNOWN TO HAVE RELATED LITIGATION ........................................................ COURT ORDERED REEXAMINATIONS .................. AVERAGE AGE OF PATENTS (years) ..................... AVERAGE RANGE OF PATENTS (years) ................ AVERAGE CLAIMS PER REQUEST......................... AVERAGE REFERENCES PER REQUEST ............. FILINGS BY DISCIPLINE Chemical .................................................... Electrical..................................................... Mechanical ................................................. Total .................................................... 83 87 73 243 90 113 94 297 93 115 99 307 101 186 105 392 111 138 110 359 120 121 2 243 124 172 1 297 141 165 1 307 167 168 57 392 147 211 1 359 1990 1991 1992 1993

215 7 29 251 37 0 5.40 0.1-20.9 15.20 9.50

243 4 36 283 27 0 4.60 0.0-22.8 15.30 9.50

267 5 23 295 47 0 5.20 0.0-22.8 15.40 9.60

316 5 25 346 47 0 5.00 0.0-18.1 15.40 9.40

311 10 29 350 75 0 5.00 ....2 ....2 9.50

1 Reexamination was instituted on July 1, 1961, in accordance with provisions of P.L. 96-517. 2 Data for FY 1993 was not available.

Table 12 SUMMARY OF CONTESTED PATENT CASES 56

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Summary of Patent Examining Activities
(As of September 30 of each fiscal year) Patent examining activity Applications filed, total Utility1 Reissue Plant Design First actions: Design Utility, plant, and reissue PCT/Chapter 1 Patent application disposals, total Allowed , total Design Utility, plant, and reissue Abandoned, total Design Utility, plant, and reissue Statutory invention registrations, total PCT/Chapter II examinations completed Patents issued3, total Utility Reissue Plant Design Allowed applications, issue fee not paid4 Pendency time of average patent application5 Reexamination requests Reexamination certificates issued PCT search reports prepared PCT international applications, USPTO as receiving office National requirements, USPTO as receiving office International preliminary examination reports Patents renewed under P.L. 102-2046 Patents expired under P.L. 102-2046
1 2 2

1994 201,554 185,087 430 606 15,431

1995 236,679 220,141 647 516 15,375

1996 206,276 189,979 573 564 15,160

1997 237,045 219,453 606 714 16,272

1998 256,666 238,811 693 586 16,576

16,832 168,722 8,363 189,646 119,609 12,388 107,221 69,909 4,977 64,932 128 6,918 113,268 101,270 347 513 11,138 5,883 19.0 379 309 10,813 14,265 9,076 8,005 121,104 38,859

18,223 176,220 9,454 189,520 119,621 13,055 106,566 69,796 3,336 66,460 103 8,040 114,241 101,895 294 390 11,662 5,294 19.2 392 281 10,440 15,941 10,582 7,456 140,512 48,604

15,465 179,391 11,224 197,244 135,321 13,627 121,694 61,819 3,461 58,358 104 8,403 116,875 104,900 291 338 11,346 5,408 20.8 418 298 11,078 20,106 11,662 7,571 408,944 60,392

15,038 193,635 12,268 212,763 148,802 13,562 135,240 63,878 2,511 61,367 83 11,582 122,977 111,979 267 400 10,331 5,599 22.2 376 334 12,048 22,767 13,858 11,738 138,695 54,485

16,836 192,849 13,430 220,333 158,259 15,214 143,045 61,994 1,892 60,102 80 12,223 154,579 139,298 284 577 14,420 6,853 23.8 350 317 12,859 27,138 17,305 12,003 135,462 41,063

Utility patents include chemical, electrical and mechanical applications. ``Allowed Patent Applications'' are applications awaiting issuance (i.e., publication) as patents. 3 Excludes withdrawn numbers. 4 35 U.S.C. 151 (includes design applications). 5 Average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents. 6 The provisions of P.L. 102-204 regarding the renewal of patents superceded P.L. 96-517 and P.L. 97-247.

Table 13.

Reexamination
(FY 1994 - FY 1998) Activity Requests filed, total By patent owner By third party Commissioner-ordered Determinations on requests, total Requests granted: By examiner By petition Requests denied 334 6 30 372 26 386 8 20 Requests known to have related litigation 77 379 102 146 131 100 392 101 131 160 Filings by discipline, total Chemical Electrical Mechanical - Represents zero. 370 398 414 391 357 4 30 379 150 227 2 392 138 253 1 418 194 223 1 376 157 215 4 350 168 178 4 348 315 2 31 1994 1995 1996 1997 1998

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65 376 123 100 153

66 350 120 94 136

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Case 3:08-cv-00060-BTM-CAB U N I T E D S T A T E S
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S UMMARY O F P AT E N T E XAMI N I N G ACT I VI T I E S (As of September 30 of each fiscal year) 1998 256,666 238,850 582 658 16,576 41,622 1999 278,268 259,618 664 759 17,227 54,727 2000 311,807 291,653 805 786 18,563 78,963 2001 344,717 324,211 956 914 18,636 86,123 2002 353,394 331,580 974 1,134 19,706 89,537

PATENT EXAMINING ACTIVITY Applications filed, total Utility /1, /2 Reissue /2 Plant /2 Design Provisional Applications Filed /3 First actions Design Utility, Plant, and Reissue PCT/Chapter 1 Patent application disposals, total Allowed patent applications, total /3 Design Utility, Plant, and Reissue Abandoned, total Design Utility, Plant, and Reissue Statutory invention registration disposals, total PCT/Chapter II examinations completed Patents issued /4 Utility Reissue Plant Design Allowed applications, issue fee not paid /5 Pendency time of average patent application /6 Reexamination requests Reexamination certificates issued PCT search reports prepared PCT international applications received by USPTO as receiving office National requirements received by USPTO as designated/elected office International preliminary examination reports Patents renewed under P.L. 102-204 /7 Patents expired under P.L. 102-204 /7
1/ 2/ 3/ 4/ 5/ 6/ 7/

16,836 192,849 13,430 220,333 158,259 15,214 143,045 61,994 1,892 60,102 80 12,223 154,579 139,298 284 577 14,420 6,853 23.8 350 317 12,859 27,138 17,305 12,003 135,462 41,063

18,050 226,642 14,316 238,292 171,685 16,305 155,380 66,493 2,431 64,062 114 12,886 159,166 142,856 437 393 15,480 4,000 25.0 385 243 14,116 30,305 19,941 14,615 156,414 52,289

17,856 237,421 16,331 252,871 182,888 16,688 166,200 69,895 1,839 68,056 88 15,471 182,223 164,490 561 453 16,719 7,633 25.0 318 276 15,896 36,671 23,628 15,044 206,255 47,958

17,748 241,770 17,972 257,467 183,394 16,526 166,868 74,014 1,448 72,566 59 18,859 187,822 169,576 504 563 17,179 6,985 24.7 296 287 16,692 43,322 26,821 17,740 205,117 49,077

19,029 275,055 19,460 279,297 189,191 17,377 171,814 90,092 1,675 88,417 14 16,456 177,317 160,843 466 912 15,096 6,928 24.0 272 200 19,646 42,889 29,846 17,949 194,143 53,724

Utility patents include chemical, electrical and mechanical applications. Utility, Plant, and Reissue applications revised from 1996 - 2000 to reflect the latest actual counts in PALM. Allowed Patent Applications are applications awaiting issuance (i.e., publication) as patents. Excludes withdrawn numbers. 35 U.S.C. § 151 (includes design applications). Average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents. The provisions of P.L. 102-204 regarding the renewal of patents superceded P.L. 96-517 and P.L. 97-247. FY 1999 column revised from FY 1999 report.

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TABLE 13A ACTIVITY Requests filed, total By patent owner By third party Commissioner ordered

EX PARTE REEXAMINATION (FY 1998 - FY 2002) 1998 350 168 178 4 1999 385 173 181 31 2000 318 137 172 9 2001 296 144 150 2 2002 272 121 140 11

Determinations on requests, total Requests granted: By examiner By petition Requests denied

348

367

338

342

272

315 2 31

327 1 39

320 2 16

263 2 77

262 1 9

Requests known to have related litigation

66

62

80

80

52

Filings by discipline, total Chemical Electrical Mechanical

350 120 94 136

385 138 107 140

318 96 103 119

296 90 89 117

272 87 78 107

TABLE 13B ACTIVITY Requests filed, total Determinations on requests, total Requests granted: By examiner By petition Requests denied

INTER PARTES REEXAMINATION (FY 2000 - FY 2002) 2000 2001 1 2002 4 5 5 -

Requests known to have related litigation

-

-

-

Filings by discipline, total Chemical Electrical Mechanical

-

1 1 -

4 2 2

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TABLE 1: SUMMARY OF PATENT EXAMINING ACTIVITIES (FY 2003 - FY 2007)
PRELIMINARY FOR FY 2007 1

Patent Examining Activity

2003

2004

2005

2006

2007

Applications filed, total 2 355,418 378,984 409,532 445,613 467,243 Utility 3 Reissue Plant Design Provisional Applications Filed 4 First actions Design Utility, Plant, and Reissue PCT/Chapter Patent application disposals, total 19,013 17,328 20,108 23,291 29,029 331,729 353,319 381,797 417,453 438,576 938 785 21,966 996 1,212 23,457 1,143 1,288 25,304 1,204 1,103 25,833 994 1,047 26,626

92,517 102,268 111,753 121,471 132,352

283,111 288,315 297,287 320,349 367,953 23,277 17,935 22,795 25,034 24,741

303,635 304,921 298,838 332,535 362,227

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Allowed patent applications, total Design Utility, Plant, and Reissue Abandoned, total Design Utility, Plant, and Reissue Statutory invention registration disposals, total PCT/Chapter II examinations completed

205,879 195,611 182,254 186,593 195,530 17,596 16,262 18,161 20,721 25,747

188,283 179,349 164,093 165,872 169,783 97,745 109,295 116,564 145,912 166,690 1,569 1,471 1,332 2,125 2,661

96,176 107,824 115,232 143,787 164,029

11

15

20

30

7

21,005

19,439

12,594

7,295

5,336

Applications Published 5 243,007 248,561 291,221 291,259 302,678 Patents issued 6 Utility Reissue Plant Design Pendency time of average patent application 7 Reexamination certificates issued PCT international applications received by USPTO as receiving office
2

189,590 187,170 165,483 183,187 184,377 171,493 169,296 151,077 162,509 160,308 394 1,178 16,525 343 998 16,533 195 816 13,395 500 1,106 19,072 546 979 22,544

26.7 193

27.6 138

29.1 223

31.1 329

31.9 367

42,969

45,396

46,926

52,524

52,214

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National requirements received by USPTO as designated/elected office 2 ,
8

32,753

37,173

41,256

48,158

52,339

Patents renewed under Public Law (P.L.) 102-204
9

253,475 269,815 268,935 324,913 343,894 57,770 63,552 67,534 72,654 67,122

Patents expired under P.L. 102-204 9

Notes: 1: FY 2007 data are preliminary and will be finalized in the FY 2008 PAR. (back to text) 2: FY 2006 application data has been updated with final end of year numbers. (back to text) 3: Utility patents include chemical, electrical and mechanical applications. (back to text) 4: Provisional applications provided for in Pub.L. 103-465. (back to text) 5: Eighteen-month publication of patent applications provided for in the American Inventors Protection Act of 1999, Pub.L. 106-113. (back to text) 6: Excludes withdrawn numbers. Past years' data may have been revised from prior year reports. (back to text) 7: Average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents. (back to text) 8: FY 2005 data has been updated. (back to text) 9: The provisions of Pub.L. 102-204 regarding the renewal of patents superceded Pub.L. 96-517 and Pub.L. 97-247. (back to text)

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Table 13A: Ex Parte Reexamination Case 3:08-cv-00060-BTM-CAB

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TABLE 13A: EX PARTE REEXAMINATION (FY 2003 - FY 2007)
Activity Requests filed, total By patent owner By third party Commissioner ordered Determinations on requests, total 1 Requests granted: By examiner By petition Requests denied Requests known to have related litigation Filings by discipline, total Chemical Electrical Mechanical 360 1 20 109 392 124 118 150 408 11 138 441 130 156 155 509 2 26 176 524 138 188 198 422 5 31 229 511 118 228 165 575 2 17 369 643 133 275 235 2003 2004 2005 2006 2007 392 136 239 17 381 441 166 268 7 419 524 166 358 537 511 129 382 458 643 124 519 594

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Notes: 1: Past years' data have been revised from prior year reports. (back to text)

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EXHIBIT B

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CALCULATION OF AVERAGE TIME FOR COMPLETION OF PATENT REEXAMINATION (bold figures are from USPTO Annual Reports)

Document 36-3 Filed 04/15/2008

1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007

Ex Parte Filing Nos. 243 297 307 392 359 379 392 418 376 350 385 318 296 272 392 441 524 511 643

Related to Litigation 37 27 47 47 75 77 100 89 65 66 62 80 80 52 109 138 176 229 369

Percentage Related to Lit # Deter 15% 251 9% 283 15% 295 12% 346 21% 350 20% 370 26% 398 21% 414 17% 391 19% 348 16% 367 25% 338 27% 342 19% 272 28% 381 31% 419 34% 535 45% 453 57% 594

Ex Parte Reexams Accepted 222 247 272 321 321 340 372 386 361 317 328 322 265 263 361 408 511 425 577

# Granted less Certificates Certificates Issued Issued 206 16 224 23 200 72 243 78 293 28 309 31 281 91 298 88 334 27 317 0 243 85 276 46 287 -22 200 63 193 168 138 270 223 288 329 96 367 210

Reexam Backlog 16 39 111 189 217 248 339 427 454 454 539 585 563 626 794 1064 1352 1448 1658

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GROWTH OF REEXAM BACKLOG

1800

1600

1400

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1000

800
Certificates Issued Applications Accepted Backlog Pending Reexam

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400

200

0 1992 1993 1994 1995 1996 Backlog Pending Reexam 1999 2000 2001 2002 2003 2004 2005 Certificates Issued 2006 2007

1989

1990

1991

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EXHIBIT C

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Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending

A. Summary: The United States Patent and Trademark Office (Office) revised section 2240 of the Manual of Patent Examining Procedure (MPEP) in May of 2004 to set forth a new policy when a second or subsequent request for reexamination is filed while an "earlier filed reexamination" is pending, and the second or subsequent request cites only prior art (hereinafter "old art") which raised a substantial new question of patentability (SNQ) in the pending reexamination proceeding. See MPEP § 2240 (8th ed. 2001)(Rev. 2, May 2004). Under the new policy, the second or subsequent request for reexamination will be ordered only if that old prior art raises a substantial new question of patentability which is different than that raised in the pending reexamination proceeding. If the old prior art cited (in the second or subsequent request) raises only the same issues that were raised to initiate the pending reexamination proceeding, the second or subsequent request will be denied. It is to be noted that reliance on prior art cited in the pending reexamination (old art) does not preclude the existence of a SNQ that is based exclusively on that old art. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request. The presentation/viewing of old art in a new light, or in a different way, is discussed in Ex parte Chicago Rawhide, 223 USPQ 351 (Bd. Pat. App. & Inter. 1984). B. Background: A request for ex parte reexamination of a patent pursuant to 35 U.S.C. 302, and a request for inter partes reexamination of a patent pursuant to 35 U.S.C. 311, must raise a substantial new question of patentability (SNQ) in order for a reexamination of the patent to be initiated. More than one reexamination request may be filed for the same patent, and a second or subsequent reexamination request for reexamination of a patent, where a first reexamination proceeding is pending, has historically been granted based on the same prior art that raised the SNQ in a pending first reexamination proceeding. It has been the Office's experience, however, that both patent owners and third party requesters have used a second or subsequent reexamination request (based on the same substantial new question of patentability initially raised or existing in the pending reexamination proceeding) to prolong the reexamination proceeding, and in some instances, to turn it essentially into an inter partes proceeding. These actions by patent owners and third party requesters have resulted in multiple reexaminations taking years to conclude, thus making it extremely difficult for the Office to conclude reexamination proceedings with "special dispatch" as required by statute (35 U.S.C. 305 for ex parte reexamination, 35 U.S.C. 314 inter partes reexamination). For example, under the prior practice, a patent owner whose claims are rejected in a pending

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reexamination proceeding could repeatedly file multiple ex parte reexamination requests based on the same substantial new question of patentability raised, or existing, in the pending reexamination proceeding. By doing so, the patent owner could keep the reexamination proceeding pending indefinitely, to delay the issue of a reexamination certificate canceling the claims of the patent being reexamined. Additionally, a third party requester could file a second or subsequent reexamination request, while a first reexamination proceeding is pending, based on the same substantial new question of patentability raised, or existing, in the first reexamination proceeding, in order to address any responses to Office actions made by the patent owner. This use of a second or subsequent reexamination request has permitted third party requesters to, in effect, obtain an inter partes type of reexamination process in an ex parte reexamination proceeding. Moreover, concerns regarding lengthy ex parte reexamination pendency resulting from multiple reexamination request filings were raised by witnesses at the Office's Round Table on the Equities of Inter Partes Reexamination Proceedings held February 17, 2004. C. Implementation of New Policy: Responsive to these concerns, the Office revised its policy to be as is now set forth in the current (May 2004) revision of MPEP § 2240, that is: the SNQ for a second or subsequent request for reexamination must be new and different than any SNQ that was raised, or existed, during any prior pending or concluded reexamination proceeding for the patent. This revised policy is consistent with the statutory mandate of special dispatch and the intent of the ex parte reexamination statute (an ex parte reexamination proceeding is not an inter partes type of reexamination process). Further, 35 U.S.C. 303(a) states that "[w]ithin three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request." It is reasonable to interpret this provision as requiring each request for reexamination to raise its own substantial new question of patentability as compared not only to the original prosecution (in the application for the patent) and any earlier, concluded reexamination proceedings, but to pending reexamination proceedings as well. To accompany the revision of MPEP § 2240, MPEP § 2640, which was newly added to the MPEP in May of 2004 to address inter partes reexamination proceedings, was drafted to implement this revision of policy for inter partes reexamination proceedings. D. Transition Procedure: It is noted that, as a consequence of the changes made to MPEP § 2240, a patent owner will now be prevented from obtaining entry of an amendment and/or evidence not entered after final rejection in an ex parte reexamination proceeding by filing another request for reexamination based on the same substantial question of patentability raised/existing in the pending reexamination proceeding. In order to provide relief to the patent owner, the Office plans to propose a revision to the patent rules to provide for the filing of a request for continued reexamination (RCR) which would be similar to the request for continued examination (RCE) practice for applications. If the RCR practice is implemented, the patent owner, by filing an RCR, could obtain continued prosecution on the merits in the reexamination 2

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proceeding, including entry of an amendment and/or evidence that was denied entry after a final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding. Until these new rules become effective, however, patent owners are advised to use either: (1) the petition procedure under 37 CFR § 1.181 to seek review of a denial of entry of an amendment submitted after final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding; or (2) the petition procedure under 37 CFR § 1.182 to seek relief that is not currently provided by an existing rule, but that would be provided when a new request for continued reexamination (RCR) practice is in effect. E. Inquiries: Inquiries regarding this matter may be directed to Kenneth M. Schor, Senior Legal Advisor, Office of Patent Legal Administration at telephone: (571) 272-7710.

Date:

2/2/05

Signed: /S/ JOSEPH J. ROLLA
Deputy Commissioner for Patent Examination Policy

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Pre-litigation Strategies: Patent Reexamination
February 23, 2004 By Robert E. Krebs

Introduction
The costs of patent litigation -- both in terms of time and money -- have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals. The costs and commercial uncertainty of patent litigation have been addressed by Congress in the "21st Century Dept. of Justice Appropriations Authorization Act of 2002. The Act amended a procedure, first created by Congress in 1980, for reexamination of patents in the U.S. Patent and Trademark Office ("PTO"). The reexamination procedure was expanded by Congress in 1999, when it provided for "inter partes" reexamination. The legislative purpose of "inter partes" reexamination is explained in the Congressional Record as follows: Generally, Title V is intended to reduce expensive patent litigation in U.S. district courts by giving third-party requesters, in addition to the existing ex parte reexamination in Chapter 30 of title 35, the option of inter partes reexamination proceedings in the PTO. Congress enacted legislation to authorize ex parte reexamination of patents in the PTO in 1980, but such reexamination has been used infrequently since a third party who requests reexamination cannot participate at all after initiation the proceedings. Numerous witnesses have suggested that the volume of lawsuits in district courts will be reduced if third parties can be encouraged to use reexamination by giving them an opportunity to argue their case for patent invalidity in the PTO. Title V provides that opportunity as an option to the existing parte reexamination procedures.1 This paper summarizes the reexamination process and discusses strategies for a patent challenger. It should be noted that two principal issues are usually present in every patent litigation: a) the question of validity of the patent in view of the prior art, and b) the question of the scope of the claims of the patent. As will be explained below, patent validity may be resolved in the reexamination process and, also, the scope of the patent claims may be altered.

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Pre-litigation Strategies: Patent Reexamination

Ex parte Reexamination
In a ex parte reexamination, either a challenger or patent holder may seek reexamination of a patent based on patents or printed publications.2 The requester files the request for reexamination, and within three months the PTO determines whether a substantial new question of patentability exists.3 If so, the PTO orders reexamination of the patent.4 A determination of no substantial new question is final and non-appealable.5 If the PTO orders reexamination, the patent holder is given the opportunity to file a statement concerning the new question of patentability, including amendments or new claims he/she wants to propose.6 (Provided, however, that the claims may not be broadened.)7 If the patent holder files such a statement, the statement must be served on the person requesting reexamination, and the requester is given two months to file a reply to the patent owner's statement.8 From that point on the claims are examined without participation by the requester. Following the ex parte reexamination, the PTO issues a certificate canceling any claim determined to be unpatentable, confirming any claim determined to be patentable and incorporating in the patent any new claim or amended claim determined to be patentable.9

Inter partes Reexamination
Inter partes reexaminations are similar to ex parte proceedings in some ways. Both are initiated by a request for reexamination.10 Also, the only ground for seeking reexamination under either process is prior art consisting of patents or printed publications.11 Furthermore, at the outset, the PTO determines whether the request raises a substantial new question of patentability.12 If the PTO determines that there is a substantial new question of patentability, an inter partes reexamination is ordered.13 Thereafter, just as in an ex parte proceeding, the third party requester will be provided with a copy of Office Actions issued by the PTO.14 Also, just as in an ex parte proceeding, the third party requester will be provided a copy of the patent owner's responses to Office Actions. However, unlike an ex parte proceeding, the third party requester may reply to the Office Actions and to the patent owner's responses.15 After the Examiner has reached a final decision in an inter partes proceeding, either the patent owner or the requester may appeal an adverse finding to the PTO Board of Patent Appeals and Interferences. After the Board reaches its decision, either party may appeal to the U.S. Court of Appeals for the Federal Circuit from an adverse determination.16 On the other hand, in an ex parte case, the requester does not have comparable options of appeal either to the Board or to the Court. A critical difference between inter partes and ex parte proceedings concerns estoppel. Unlike an ex parte requester, the inter partes requester will be estopped, in subsequent litigation in a district court or a subsequent inter partes proceeding, to assert the invalidity of any claim finally determined to be valid on any ground which is raised or could have been raised in the inter partes reexamination.17

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Pre-litigation Strategies: Patent Reexamination

Strategic Considerations
In both ex parte and inter partes proceedings the patent challenger has the opportunity to submit prior art for consideration by the Examiner. The patent challenger, of course, has the ability to do a thorough search of the prior art to find art which may be used to invalidate the patent or limit the scope of the claims so the challenger's product does not infringe. Whether to pursue patent reexamination ­ whether inter partes or ex parte ­ involves the balancing of significant considerations. The major advantage to a patent challenger of the inter partes procedure over the ex parte procedure is that in the inter partes procedure the challenger has the right to participate throughout the process, for example, by supplying prior art and by filing rebuttals to arguments submitted by the patentee. Also, the challenger can submit arguments supporting the Examiner when the Examiner takes a position unfavorable to the patentee, and the challenger can submit declarations by technical experts concerning the patent and the prior art. The challenger however, must consider certain disadvantages to the reexamination process. One important consideration is that the process gives the patentee the opportunity to amend its claims and to add new claims. While the patentee may not broaden the scope of its claims, patentee may amend the claims to: 1. make them patentable in view of the prior art, including the new prior art cited by the challenger, and 2. make them more clearly cover the challenger's allegedly infringing product. Another major disadvantage to the challenger, in the inter partes process, is that the challenger is estopped from challenging the patent in court, except in very limited circumstances. Thus, the inter partes challenger must be prepared to do its best job before the PTO because it is unlikely to get another opportunity if it fails to achieve the results it desires there.

For more information, please contact:

Robert E. Krebs
Co-Chair, Intellectual Property and Trade Regulation Group
408.282.1823 [email protected]

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Endnotes
1

American Inventors Protection Act Of 1999, Extension Of Remarks, House of Representatives, Cong. Rec. E1789 (Hon. Howard Coble, August 05, 1999). 35 U.S.C. §§ 301, 302, 37 CFR §1.510 35 U.S.C. §§ 303, 37 CFR §1.515 35 U.S.C. § 304, , 37 CFR §1.525 35 U.S.C. § 303 35 U.S.C. §§ 304, 305, 37 CFR §1.530(b) 35 U.S.C. § 305 35 U.S.C. §§ 304, 37 CFR §1.535 35 U.S.C. § 307, 37 CFR § 1.570 35 U.S.C. §§ 302, 311(a), 37 CFR §§ 1.510, 1.913 Id. 35 U.S.C. §§ 303, 312(a), 37 CFR §§ 1.513, 1.931 35 U.S.C. §313, 37 CFR §1.931 35 U.S.C. §314(b), 37 CFR §1.903 35 U.S.C. §314(b), 37 CFR §1.947 35 U.S.C. §315, 37 CFR §1.959 35 U.S.C. §§ 315(c), 317(b)

2 3 4 5 6 7 8 9

10 11 12 13 14 15 16 17

©2004 By Thelen Reid & Priest LLP. This article has been published as an information service to clients and friends. Please recognize that the information is general in nature and must not be relied upon as legal advice. The authors, listed above, or your Thelen Reid attorney contact, would be happy to discuss the information in this article in greater detail and its application to your specific situation. We welcome your comments and suggestions.

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EXHIBIT E

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Tuesday, June 12, 2007

[email protected]

http://www.sddt.com

Source Code: 20070612tzb

New local rules pave way to speedier patent trials
By DAVID KLEINFELD AND JOHN BENASSI Tuesday, June 12, 2007 One of the first questions a patent-holder faces after deciding it is time to sue an infringer is: "Where should we file?" For many companies, including many San Diego-based companies, the answer to that question has been to pack the bags and head out of town. Some plaintiffs, hoping for a quick resolution to their claims, travel to such far-flung jurisdictions as the Eastern District of Texas or the Eastern District of Virginia, both of which are thought to have a 'rocket-docket' for patent cases. Others, looking for courts they perceive to be more patent-savvy, will head for jurisdictions such as the Northern District of California or the Northern District of Illinois, that have been trying a large volume of patent cases for a couple of decades. But the calculus is changing, both for San Diego companies and for others, thanks in large part to the Southern District of California's recent adoption of a comprehensive set of local patent-litigation rules and a growing enthusiasm for patent cases among members of the local federal bench. New local patent-litigation rules One of the main objectives of the new patent rules, which have been in force for just over a year, is to provide predictable and uniform treatment for intellectual property litigants and streamline the process by which a patent case is litigated, shortening the time to trial or settlement and thereby reducing costs for all parties involved. To this end, the new rules set up a schedule that will bring the parties to the all-important claim construction (or Markman) hearing approximately nine months after the complaint is filed. Having the Markman hearing as early as practically possible is crucial for litigants seeking a timely resolution because the claim construction order issued by the court after the hearing generally has a profound impact on the rest of the case. The parties will sometimes be inclined to settle once they have seen how the court construes the patent claims at issue. If not, the Markman ruling provides focus for the remaining discovery, dispositive motion practice and trial preparation. Indeed, it is largely because of the early-scheduled Markman hearing that Southern District judges can now set trial dates for 18 months after complaints are filed. Judge Dana M. Sabraw, who chaired the committee that established the new patent local rules, says: "A majority of the judges of the Southern District are firmly committed to holding claim construction hearings within nine months of the filing of the complaint, and to setting a trial date within 18 months of that filing." In addition to providing a brisk pace for patent litigation, the new rules also establish orderly, uniform procedures for some of the disclosures and discovery unique to patent lawsuits, bringing the Southern District in line with other jurisdictions such as the Northern District of California and Eastern District of Texas. For example, the patentee's chart "Disclosure of Asserted Claims and Preliminary Infringement Contentions" is due 14 days after the initial CMC. The accused infringer's "Preliminary Invalidity Contentions," accompanied by documents supporting those contentions, are due 60 days later. The parties' first proposed claim constructions follow within a month, and, as in some other jurisdictions, the parties then prepare refined claim charts for submission to the court. Experienced patent litigators used to working in other jurisdictions will likely find these disclosure/discovery rules familiar, predictable and convenient. The new patent local rules also incorporate an existing feature unique to Southern District litigation practice: the Early Neutral Evaluation (ENE). As local practitioners know, and as out-of-town litigants will learn if they choose to avail themselves of the southern district, the ENE provides the parties with a real opportunity to settle the case before spending substantial time and money. Experienced magistrate judges with the power to compel principals to appear in chambers will try to help the parties reach a deal and will usually remind both sides that it is often wise to settle rather than roll the dice on a jury trial. More judges means faster time to trial Another factor that will likely accelerate time to trial in the Southern District is that after years of suffering a

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shortage of seated judges the court finally has a full bench. For many years, the Southern District operated with less than its full complement of judges, was forced to rely on senior judges and was even forced to borrow judges from other districts to fill the void. A litigation backlog was the inevitable result. Thanks to a recent increase in funding, however, since 2003 the Southern District has had its full complement of judges, many of whom are ready and willing to take on patent cases. Sabraw is one of the newly appointed judges, and he says: "My colleagues and I are very interested in patent cases, and are eager to tackle the difficult and challenging issues they present. With Judge Brewster's retirement on the horizon, more of us hope and expect to receive a wider variety of patent cases, and to continue Judge Brewster's thorough and thoughtful treatment of them." Again, we can expect to see faster times to trial as patent cases can now be distributed to more judges. Issa specialized patent docket legislation Another, even more recent development that may help turn the Southern District into a patent litigation destination is the passage of HR 34 in February. Shepherded through the House of Representatives by congressmen Darrell Issa, R-Calif, (himself an inventor and patent holder) and Adam Schiff, D-Calif., the bill provides a modest-sized pilot program ($5 million a year for 10 years) to allow select jurisdictions -- the Southern District is a frontrunner to be one of them -- to become more fluent in resolving patent disputes. The legislation encourages judges to opt-in to (or opt-out of) patent cases and provides opt-in judges with funding for educational and professional development and for law clerks with technical backgrounds. "The prospect of having several judges that are 'experts' in patent law is exciting," says Sabraw. "It would be a great benefit not only to the court, but also to the practitioners and parties that appear in the Southern District." An excellent result for San Diego Streamlining the local patent-litigation rules and having a greater number of patent-savvy judges on the bench will result in a more efficient and informed federal court in San Diego. As a result, we can expect to see more San Diego companies filing patent cases here in their home court and more out-of-town patent holders making San Diego a destination for the speedy, efficient resolution of their important patent infringement actions. This promises to be an excellent result for both Southern California technology companies and our court system. David Kleinfeld and John Benassi are shareholders at Heller Ehrman LLP. Kleinfeld is co-chair of the firmwide Complex Commercial Litigation Group. Benassi is managing partner of the San Diego office.

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