Free Motion to Stay - District Court of California - California


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Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 1 of 34

Exhibit 4

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

10

11 JENS ERIK SORENSEN, as Trustee of
SORENSEN RESEARCH AND

CASE NO. 06cv1572 BTM (CAB)

12 DEVELOPMENT TRUST,
13
Plaintiff,

ORDER:
(1) DENYING PLAINTIFF'S MOTION FOR RECONSIDERATION OF DENIAL OF OBJECTIONS TO MAGISTRATE JUDGE'S ORDER OF APRIL 9, 2007 AS MOOT (Doc.
#163) ;

14
15

vs.
16 17
18

(2) GRANTING DEFENDANTS' MOTION FOR RECONSIDERATION OF THE COURT'S JUNE 20, 2007 ORDER RE BIFURCATION (Doc.

19

#171);
THE BLACK AND DECKER

20
21

CORPORATION, et al.

(3) GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION TO STAY (Doc. #178);

23 FOR PART~L SUMMARY

22

Defendants.

and
(4) DENYING PLAINTIFF'S MOTION

24 #204)
26 On April

JUDGMENT AS PREMATURE (Doc.

25 1. Motion for Reconsideration of Denial of Obiections to Magistrate Judge's Order

9, 2007, Magistrate Judge Bencivengo issued an order in which she granted

27 in part and denied in part Plaintiffs motion to compel further responses to discovery. In

28 accordance with 28 U.S.C. § 636(b)(1 )(A) and Fed. R. Civ. P. 72(a), Plaintiff filed an

1

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1 objection to that ruling, arguing that it was both clearly erroneous and contrary to law. In an

2 order entered June 14, 2007, the Court overruled Plaintiffs objection without prejudice. The
3 Court found that the Magistrate Judge's determinations regarding the Black & Decker
4 Defendants' waiver of

the attorney-client privilege, and the applicability of Patent Local Rule

5 2.5(d), were neither clearly erroneous nor contrary to law, on the record before the Court.

6 However, the Court was unable to determine at that time whether, and to what extent, the

7 Black & Decker Defendants ("B&D") intended to rely upon the death of Dennis Dearing to
8 provide the requisite showing of prejudice in support of any laches and/or equitable estoppel
9 defenses. Therefore, Plaintiff

was granted leave to serve an interrogatory upon B&D, which

10 stated: "Set forth, in detail, all prejudice to Defendants that resulted from the death of Dennis

11 Dearing in regard to this case." To the extent Plaintiff believed that B&D's response to the
12 interrogatory indicated that this Court's determination regarding waiver of the attorney-client

13 privilege was in error, it was invited to move for reconsideration of the decision at that time.

14 On July 11,2007, B&D responded to Plaintiffs interrogatory setting forth the prejudice
15 that resulted from the death of its former in-house counsel Dennis Dearing. The prejudice
16 identified included the inability to have Mr. Dearing testify regarding his communications in

.

17 the mid-1990s pertaining to Mr. Jens Ole Sorensen's claims of infringement of the '184
18 Patent. These communications included discussions directly with Mr. Sorensen and his
19 representatives, as well as with John Schiech, Black & Decker's business manager

20 responsible for making all decisions concerning the matter. B&D also indicated that it was
21 prejudiced because it could not present Mr. Dearing as a witness to defend against Plaintiffs

22 charge of willful infringement.
23 On July 12, 2007, Plaintiff filed the present motion to reconsider

this Court's previous

24 ruling on the basis of the new evidence presented in B&D's interrogatory response. The
25 motion was calendared for hearing, without oral argument, on August 10, 2007. However,
26 while the motion was pending, Magistrate Judge Bencivengo reconsidered her earlier ruling

27 in light of B&D's interrogatory response. On August 3,2007, Judge Bencivengo issued her
28 "Order Following Discovery Conference on July 26, 2007" in which she ruled:

2

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1

2 3

files that still exist and reflect his personal thoughts and impressions, so
4

Since the defendant is affirmatively relying upon the death of Mr. Dearing to support its defense of laches, the plaintiff is entitled to review Mr. Dearing's

therefore ordered to produce any withheld documents reflecting Mr. Dearing's work product on this matter.

plaintiff may respond to defendant's claim of lost evidence. Defendant was

5 (Doc. #177 at,- 8.) Judge Bencivengo stayed production of Mr. Dearing's work product for

6 30 days in order to give B&D an opportunity to appeal the order. B&D has just taken that
7 opportunity and filed a motion for reconsideration on September 4, 2007 (Doc. #240). B&D's

8 motion is calendared for hearing by this Court on November 2,2007.
9 In light of Judge Bencivengo's more recent order requiring production of Mr. Dearing's

10 privileged documents, and the now-pending motion for reconsideration of that order, the

11 Court finds moot Plaintiffs motion for reconsideration of its previous order overruling
12 Plaintiff's objection to Judge Bencivengo's April 9, 2007 order. The Court finds that this

13 entire issue will be addressed, upon a complete and updated record that includes Judge
14 Bencivengo's August 3, 2007 order, in the Court's forthcoming decision on B&D's pending

15 motion for reconsideration. Accordingly, Plaintiffs motion is DENIED without prejudice as

1 6 moot.
17
18 11

Motion for Reconsideration of Bifurcation
On June 13, 2007, the Court held a hearing on B&D's motion for summary judgment

19

20 of laches. The Court denied B&D's motion at that hearing and discussion then ensued over

21 the possibility of setting an expedited bench trial on B&D's equitable defenses of laches and

22 estoppel. At B&D's urging, the Court and the parties agreed to schedule this bench trial
23 beginning on December 17, 2007. In a June 20, 2007 written order confirming the Court's
24 decision from the June 13 hearing, the Court explained that the trial of equitable defenses
25 could be bifurcated from the rest ofthe trial proceedings relating to infringement. (Doc. #147
26 at 2-3.) Citing the Ninth Circuit case of Daniaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir.

27 2001), the Court explained that, in deciding these equitable defenses, it would need to

28 determine whether there has been any showing of willful infringement on the part of
3

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1 Defendants that would act as a "counterdefense" to laches. The Court invited any party to
2 make a motion for reconsideration ofthe decision to bifurcate the equitable portion of

the trial

3 if they felt that the Court's determination of the willfulness issue presented a problem for any

4 subsequent jury trial proceedings.

5 On July 20, 2007, B&D accepted the Court's invitation and filed a motion for
6 reconsideration of bifurcation. (Doc. #171.) B&D explained that it had not appreciated that
7 the Court itself would need to make a finding on willfulness, without the aid of a jury, in any

8 bifurcated trial on equitable defenses. In light of this realization, and its desire to retain its

9 full rights to a jury determination on willfulness, B&D withdrew its request for an expedited

10 bench trial on its equitable defenses.

11 Plaintiff has opposed B&D's motion for reconsideration arguing that there is no
12 authority establishing any right to a jury trial on willfulness and, to the extent such a right
13 exists, B&D has waived its rights by continually requesting that the Court schedule a short
14 bench trial

on laches before proceeding with the rest of the action.

15 The Court finds that the right to a jury trial on willfulness exists in a patent action that
16 will be tried to a jury. See. e.g., Richardson v. Suzuki Motor Co., 886 F.2d 1226, 1250 (Fed.

17 Cir. 1989). Having considered the submissions of the parties and the record of these
18 proceedings, the Court does not find that B&D has knowingly waived its right to a jury trial

19 on willfulness. Moreover, the early bifurcated trial on equitable defenses was scheduled by
20 this Court in an effort to accommodate B&D's request for an early determination of laches,

21 which it argued, if found, would greatly expedite the conclusion of this matter. Having
22 recognized that a laches determination requires that this Court determine, before any jury
23 has considered the question, whether Defendants willfully infringed Plaintiff's patent, B&D

24 has withdrawn its request. The Court sees no reason to push ahead with a bifurcated trial
25 despite B&D's express wishes.

26 The Court's recognition of the practical ramifications of the intertinement of
27 willfulness in any laches determination was the impetus for the Court's invitation to
28 reconsider in its June 20, 2007 order. Having considered B&D's submission, which was

4

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1 based upon the exact issues identified in this Court's own order, the Court hereby GRANTS

2 B&D's motion. The bifurcated bench trial on equitable defenses previously scheduled for
3 December 17, 2007 is hereby VACATED, along with all pretrial proceedings associated with
4 it, including the November 26, 2007 pretrial conference.

5
6 il Motion to Stay Litigation Pending Reexamination

7 On August 3, 2007, all Defendants jointly filed a motion for a stay of these
8 proceedings. Defendants' motion is based on B&D's pending request for reexamination of
9 Plaintiffs '184 Patent, which was filed with the U.S. Patent and Trademark Office ("PTO") on

1 0 July 30, 2007. The request for reexamination challenges, infer alia, all 5 claims of the '184

11 Patent that are asserted in the present litigation. The challenge is based on a number of
12 prior art references, almost all of which were apparently not considered by the PTO in the

13 prosecution of the' 184 Patent.

14 Courts have inherent power to stay an action pending conclusion of PTO
15 reexamination proceedings. Ethicon. Inc. v. Quigg, 849 F.2d 1422,1426-27 (Fed. Cir. 1988).
16 The decision whether to grant or deny a motion to stay proceedings pending PTO

17 reexamination rests within the sound discretion of the court. See. e.g., Photoflex Products. 18 Inc. v. Circa 3 LLC, No. C 04-03715 JSW, 2006 U.S. Dist. LEXIS 37743, at *2-3 (N.D. Cal.

19 May 24, 2006). There is a "liberal policy" in favor of granting motions to stay pending the
20 outcome of PTO reexamination proceedings. ASCII Corp. v. STD Entertainment USA. Inc.,

21 844 F. Supp. 1378, 1381 (N.D. Cal. 1994).

22 In determining whether to stay litigation pending reexamination by the PTO, courts
23 generally consider the following factors: (1) the stage of litigation, i.e., whether discovery is

24 almost complete and whether a trial date has been set; (2) whether a stay would cause
25 undue prejudice or present a clear disadvantage to the non-moving party; and (3) whether

26 a stay will simplify the issues in question and trial of the case. See. e.g., Xerox Corp. v.
27 3Com Corp., 69 F. Supp. 2d 404,406 (W.D.N.Y. 1999).

28 The Court finds that this litigation has not proceeded so far that it would be unjust to

5

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1 stay the action. Although this action was originally filed about a year ago, and the Court

2 recognizes that substantial amounts of discovery have already occurred, the more relevant
3 inquiry is whether discovery is nearing completion - it is not.

1 For instance, Magistrate Judge
1 0 depositions per

4 Bencivengo recently granted the parties permission to take an additional

5 side. (See Doc. #159 at 2.) No deadline for the completion of fact discovery has even been

6 set. Moreover, the parties are just beginning to brief the preliminary issue of claim
7 construction and, in accordance with the decision above to vacate the bifurcated bench trial

8 on equitable defenses, no trial date is currently set for any aspect of this case. In addition,
9 while the Court has already considered two motions for summary judgment, it previously put

10 off consideration of two others until after claim construction, and Plaintiff has just filed a
11 substantial summary judgment motion aimed at piercing Black & Decker's corporate veiL.

12 The Court anticipates that further summary judgment motions regarding infringement and
13 patent validity will be filed once claim construction is complete. Thus, a substantial amount
14 of resources will be employed by all parties and the Court even in advance of any eventual

15 triaL. See. e.g., Broadcast Innovation. L.L.C. v. Charter Communications. Inc., No. 03-cv16 2223-ABJ-BNB, 2006 U.S. Dist. LEXIS 46623, at *26-31 (D. Colo. July 11, 2006) (granting
17 stay, in part, because of significant work remaining on motions for summary judgement, even

18 though trial date was less than three months away).
19 Plaintiff claims Defendants delayed filing their request for reexamination to gain a
20 tactical advantage over it. He claims that Defendants were aware of the prior art that they
21 reference in their reexamination request over seven months ago, but purposely delayed so
22 that the '184 Patent would expire during the reexamination process, thereby precluding
23 Plaintiff

from offering any amendments to the claims. Defendants respond that there was no

24 intentional delay and that their decision to request reexamination was based, in part, on the

25 Supreme Court decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007),

26 which was only issued at the end of ApriL. The Court is not convinced that Defendants
27
1 In reaching this determination, the Court has considered the surreply submitted by

28 Plaintiff and, therefore, the pending ex parte request to file a surreply (Doc. #201) is
GRANTED.
6
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Filed 09/10/2007 Page of 34 Filed 03/24/2008 Page 78 of11

1 employed any improper tactics in filing their request for reexamination. While Plaintiff is
2 rightfully concerned that a reexamination in the twilight of his patent puts him at a distinct
3 disadvantage, he could have prevented this situation by filing suit many years ago, thereby
4 allowing sufficient time for any reexamination to occur before the patent expired.

5 Therefore, Plaintiff's cognizable claims of prejudice if a stay should be entered

6 basically boil down to his inconvenience in delaying final collection of any monetary award
7 of royalties, assuming he ultimately wins. However, as the court recognized in Broadcast,
8 the prejudice factor "is best summarized by one question: do fhe Plainfiffs have an adequafe

9 remedy af law?" 2006 U.S. Dist. LEXIS 46623, at *32. Just as in Broadcast, the answer
10 here is that clearly Plaintiff does have an adequate remedy. Defendants point out, and
11 Plaintiff has not disputed, that the '184 Patent will expire in February 2008 independent of

12 reexamination. Given that a trial on the merits could not occur prior to that date, Plaintiff
13 would not have been granted any injunctive relief by this Court. Therefore, his claim would
14 be restricted to past monetary damages, which, with the addition of prejudgment interest, are

15 fully capable of compensating Plaintiff. Unfortunately, reexamination can be a drawn out
16 process, resulting in a significant delay in court proceedings. Protracted delay is always a
17 risk inherent in granting a stay, yet courts continue to stay actions pending reexamination.
18 The general prejudice of having to wait for resolution is not a persuasive reason to deny the
19 motion for stay. An average delay for reexamination of approximately 18-23 months is

20 especially inconsequential where Plaintiff himself waited as many as twelve years before

21 bringing the present litigation. (See PTO Reexamination Statistics at Ex. B to Niro Decl;
22 Doc. #180-3.)

23 In addition, the Federal Circuit has recently confirmed that the PTO would not be
24 bound in its reexamination by the determinations of this Court. In re Trans Texas Holdings 25 Corp., 2006-1599 and 2006-1600, 2007 U.S. App. LEXIS 19909, at *14-19 (Fed. Cir. Aug.
26 22,2007). Because of

this, the Court finds that not only is Plaintiff unlikely to be prejudiced

27 in these proceedings by a stay pending the PTO reexamination, but Defendants would

28 potentially be prejudiced by failing to enter a stay. One court has explained this possibility

7

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1 accordingly:

2

3 one possible scenario could result in irreparable harm to (Defendant): if this
Court finds that the (patent) is not invalid and that (Defendant) has infringed
4 it, and orders (Defendant) to pay damages to (Plaintiff for such infringement,

Not only could the Court and the PTO reach conflicting determinations, but

then (Defendant) would have no ability to recover those damages if at a later
5 date the PTO determined that the () patent is invalid.

6 Bausch & Lomb. Inc. v. Alcon Lab.. Inc., 914 F. Supp. 951,952 (W.D.N.Y. 1996). The Court

7 finds such a possibility to be, at a minimum, a highly undesirable outcome.

8 Finally, the Court finds that the stay will result in the simplification of issues in this
9 case. As explained by the Federal Circuit, "(o)ne purpose of the reexamination procedure
1 0 is to eliminate trial of (the issue of patent claim validity) (when the claim is canceled) or to

11 facilitate trial of that issue by providing the district court with the expert view of the PTO
12 (when a claim survives the reexamination proceeding)." Gould v. Control Laser Corp., 705
13 F.2d 1340, 1342 (Fed. Cir. 1983), cert. denied, 464 U.S. 935 (1983). The Broadcast court,

14 elaborating on this point, explained:

15 Shifting the patent validity issue to the PTO has many advantages, including:

16 1. All prior art presented to the Court will have been first considered by the
PTO, with its particular expertise.
17
2. Many discovery problems relating to prior art can be alleviated by the PTO

18 examination.
20

19 3. In those cases resulting in effective invalidity of the patent, the suit will
likely be dismissed.

21 the further use of the Court.
23

4. The outcome of the reexamination may encourage a settlement without

22 5. The record of reexamination would likely be entered at trial, thereby
reducing the complexity and length of the litigation.

24 conferences after a reexamination.
25 7. The cost will

6. Issues, defenses, and evidence will be more easily limited in final pretrial

likely be reduced both for the parties and the Court.

26 2006 U.S. Dist. LEXIS 46623, at*9-10 (quoting Emhart Indus../nc. v. Sankyo Seiki Mfg. Co.,

27 3 U.S.P.Q.2d 1889, 1890 (N.D. Iii. 1987)).

28 The Court believes that it will benefit from the PTO's evaluation of how the previously

8

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1 unconsidered prior art references impact the claims of the patent-in-suit. The PTO's expert

2 evaluation is likely to be of assistance not only as to the issues of validity, but its
3 understanding of the claims is also likely to aid this Court in the preliminary process of claim
4 construction.

5 The Court finds that, especially in this case, the reexamination process has the
6 potential to significantly narrow the issues fortrial because of the impending expiration of

the

7 '184 Patent. While the parties have argued at length about exactly how this additional
8 variable affects the calculation of the likely outcome of reexamination, the Court need not
9 resolve this dispute to reach the proper conclusion. It is enough to note that when

10 reexamination is requested by a third party, as in this case, all claims are confirmed only 29%
11 of

the time. (See PTO Reexamination Statistics at Ex. B to Niro Decl; Doc. #180-3.) Since

12 no amendments can be offered to an expired patent, there is obviously a significant likelihood

13 that the validity of the claims at issue in this action will be affected by the reexamination

14 process.2
15 In addition, the Court expects that the reexamination process will not only aid the
16 Court in these proceedings, but should also redound to the benefit of the parties, both
17 Defendants and Plaintiff. As the Broadcast court explained in its discussion of

the possibility

18 of prejudice from entering a stay:

19 If the PTO does not invalidate or otherwise alter the claims of the () patent,

20 are narrowed, both sets of parties will have benefitted by avoiding the
21 be able to pursue their claim for money damages at triaL. Finally, if the claims
needless waste of resources before this Court, and again, the Plaintiffs will

the Plaintiffs' legal remedy remains unaffected . . . . Moreover, if the claims

22 of monetary damages will increase. See, e.g., Mofson, 2005 U.S. Dist.
23 patent, 'the plaintiffs rights will only be strengthened, as the challenger's
burden of proof becomes more difficult to sustain."') (quoting Pegasus Dev.
24 Corp., 2003 U.S. Dist. LEXIS 8052, 2003 WL 21105073 at *2).

are strengthened, the Plaintiffs' position will be as well, and their likelihood

LEXIS, 2005 WL 3465664 at *1 ("I)fthe PTO upholds the validity of plaintiffs

25
26 2 Plaintiff has argued thatthe PTO is unlikely to grant reexamination precisely because the '184 Patent will expire soon. However, Plaintifffailed to produce any evidence to support

27 this contention. Moreover, even if Plaintiff is correct, and the PTO fails to grant
28 would immediately lift the stay and these proceedings would continue - a relatively
insignificant 2-month delay being all that would result.
9
06cv1572

reexamination (a decision which should issue no later than October 30, 2007), this Court

Ca e 3:06-cv-01572-BTM-CAB Document 243 Filed 03/24/2008 Page 11 of 34 Case 3:08-cv-00070-BTM-CAB Document 15-5 Filed 09/10/2007 Page 10 of 11

1 2006 U.S. Dist. LEXIS 46623, at *32-33. Accordingly, the Court finds that a stay is
2 appropriate to avoid the risk of unnecessary litigation and to permit the clarification of issues
3 before this Court.

4 Therefore, Defendants' motion to stay this litigation is GRANTED IN PART and

5 DENIED IN PART. With the exception of two pending motions, all proceedings are hereby
6 stayed pending the PTO's reexamination of the '184 Patent. The Court will continue to hear

7 Plaintiff's pending motion for entry of default against Defendant Porter-Cable Corporation
8 (Doc. #182), which is calendared for hearing on October 12, 2007. As was discussed above
9 in Section I, the Court will also continue to hear B&D's pending motion for reconsideration

10 of Magistrate Judge Bencivengo's August 3, 2007 order regarding production of Dennis

11 Dearing's attorney work product (Doc. #240), which is calendared for hearing on November

12 2,2007. The Clerk is directed to VACATE all scheduled discovery hearings, as well as the
13 claim construction hearing previously set for November 19, 2007. All hearing dates will be

14 reset, to the extent appropriate, once the stay of these proceedings has been lifted.
15 Defendants are ordered to file a notice informing the Court of the PTO's decision on
16 the pending application for reexamination within 10 days of receipt of such decision. If the
17 PTO declines B&D's request to reexamine the '184 Patent, the Court will immediately lift the
18 stay and recalendar all vacated hearing dates. If, however, the PTO approves

19 reexamination, this stay will remain in place pending some resolution of those proceedings. 20 During the pendency of the reexamination, Defendants will be required to file a notice every

21 6 months apprising the Court of any change in the status of those proceedings.
22
23 IV. Motion for Partial Summary Judgment
24 On August 30,2007, Plaintiff

filed a motion for partial summary judgment piercing the

25 corporate veils of the Black & Decker Defendants, or in the alternative, holding them to be

26 a single enterprise for purposes of patent infringement liability. (Doc. #204.) The motion is
27 presently calendared for hearing on October 26,2007. In light of

the Court's entry of a stay

28 of these proceedings pending the PTO patent reexamination, the Court finds Plaintiff's

10

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Page 11 of 11 Page 12 of 34

1 motion to be premature. Accordingly, the Court hereby DENIES Plaintiffs motion without
2 prejudice.3 As the Court is aware of

the substantial volume of Plaintiff's motion, he is invited

3 to refile this motion once the stay has been lifted by simply filing a short notice of motion
4 which incorporates by reference his earlier filing.
5

6 IT IS SO ORDERED.
7

DATED: September 10, 2007
8 9 10
11

Honorable Barry Ted Moskowitz United States District Judge

47i~

12

13

14
15 16 17 18 19

20
21

22

23

24
25 26

27

28 3 Plaintiff's pending motion to fie confidential documents under seal in support of the
motion for partial summary judgment (Doc. #204-5) is also DENIED as moot.
11
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Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 13 of 34

Exhibit 5

Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 14 of 34

BRINKS
Robert S. Malln
312-21-4221
r m a ii n(!usebrin ks.com

HOFER
GILSON
&LIONE
(I
A Professional Corporation

Via Facsimile Transmission to 858-824-9073

And Us. First Class Mail
March i 2, 2008

Intellectual Propert
Law Worldwide

Melody A. Kramer, Esq.
Kramer Law Offce

9930 Mesa Rim Road
Suite i 600 San Diego, CA 92 i 2 i

Re: Sorensen Research & Development Trust v. Emerson Electric Co. et at Case No. 3:08-cv-00060-BTM-CAB

Sorensen Research & Development Trust v. Ryobi Technologies, Inc. et at Case No. 3:08-cv-00070-BTM-CAB Sorensen Research & Development Trust v. Senco Products, Inc. Case No. 3:08-cv-00071-BTM-CAB
Dear Melody:

the above-referenced lawsuits. The bases for the motions wil be similar to the reasons why Judge Moskowitz ordered stays in the SRDT litigations with Black & Decker, Giant International, and Helen of Troy.
We plan to file a motion to stay in each of

Please advise me if you will be opposing the motions to stay and, if so, on what basis. We would prefer not to be required to file a contested motion if there is no basis for opposition different from those that the court has already rejected.
Best regards,

Robert S. Mallin
RSM:jms

t~JL
Roger G. Perkins, Esq.

cc: Orlando F. Cabandy, Esq.

NBC Tower - Suite 3600 I 455 N. City/ront Plaza Drive I Chicago, IL 60611.5599 I Telephone 312.321.4200 I Fax 312.321.4299 I usebrinks.com

Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 15 of 34

Exhibit 6

MAR.Case 3:08-cv-00070-BTM-CAB 12.2008 3: 14PM

Document 15-5

Filed 03/24/2008

NO.

Page 16 P. 34 of 1/1 4592

Kramer Law Office, Inc.
9930 Mesa Rim Rd.. Ste. i 600
San Diego. California 92121

Phone 856/362-31 SO

Fox 856/824-9073

Melody A. Kramer, Esq,
mQK~kramerlawip.com

VIA FAX

312-321-4221 ONLY
March 12, 2008

Mr. Robert S. Malln Brinks Hofer Gilson & Lione NBC Tower, Suite 3600 455 N. Cityfront Plaza Drive
Chicago, IL 6061 1 -5599

RE: Sorensen Research & Development Trust v. Emerson Electrc, et a1 USDC Southern District of California, Case No. 08ev00060 Sorensen Research & Development Trust v. Ryobi Technologies. et al
Cali fomi a, Case No. 08cv00070 Sorensen Research & Development Trust v. Senco Products. Ine.. et al USDC Southern District of California, Case No. 08cv00071 USDC Southern Distrct of

Dear Mr. Malln:

I have received your letter of this date advising us tht your clients intend to fie motions to stay. Thank you for the advisement We intend to oppose those motions.

cc: Orlando F. Cabanday - 310/305-2116 fax

Roger G. Perkins - 619/557-0460 fax

Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 17 of 34

Exhibit 7

Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 18 of 34

UNITED STATES PATENT AN TRADEMARK OFFICE
Commissioner for Patents United States Patent and Trademark Office
P.O. Box 1450 Alexandria. VA 22313-1450

www.uspto.go

Ex Parte Reexamination Filing Data - June 30, 2006

1. Total requests filed since start of

ex parte reexam on 07/01/81......................................8084
3313

a. By patent owner b. By other member of public
c. By order of

Commissioner

4606
165

41% 57% 2%

2. Number of fiings by discipline
a. Chemical Operation
b. Electrical Operation

c. Mechanical Operation

2496 2608 2980

31% 32% 37%

3.

Annual Ex Parte Reexam Filings
Fiscal Yi. No.
1981

Fiscal Yi. No.
1989 1990
1991 1992 1993

Fiscal Yi. No.
1997 1998 1999

1982 1983 1984 1985 1986 1987 1988

78 (3 mos.) 187 186 189

Fiscal Y i. No.

230 232 240 268

1994 1995 1996

243 297 307 392 359 379 392 418

2000
2001

2002 2003 2004

376 350 385 318 296 272 392
441

2005 2006

524 340

4. Number known to be in litigation.................. ... ...... ........................... .1895 23%

5. Determinations on requests........................................................................................... 7852
a. No. granted ...... ... ............ .............. ............ .................................. 7160................... 91 %
examiner (1) By (2) By Director (on petition)
7054
106

b. No. denied.................................................................................... 692 ..................... 90/0
(1) By

examiner

657
35

(2) Order vacated

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6. Total examiner denials (includes denials reversed by Director)....................................... 763
a. Patent owner requester b. Third party requester

430
333

56% 44%

7. Overall reexamination pendency (Filing date to certificate issue date)
a. A verage pendency

b. Median pendency

22.8 (mos.) 17.6 (mos.)

8.

Reexam certificate claim analysis:
a. All claims confirmed b. All claims cancelled c. Claims changes

Owner Requester
23% 7% 70%

3rd Party Requester
29% 12% 59%

Comr'r
Initiated
13% 19% 68%

Overall
26%
10%

64%

9. Total ex parte reexamination certificates issued (1981 - present) .......... ......................... 5433
a. Certificates with all claims confirmed
b. Certificates with all claims canceled c. Certificates with claims changes

1410 554 3469

26%
10% 64%

10. Reexam claim analysis - requester is patent owner or 3rd paiiy; or Comr'r initiated.
a. Certificates PATENT OWNER REQUESTER................................................... ..2360
(I) All claims confirmed (2) All claims canceled (3) Claim changes

543 174 1643

23% 7% 70%

b. Certificates _ 3rd PARTY REQUESTER......... .......................................................2934

(1) All claims confirmed
(2) All claims canceled

(3) Claim changes

849 353 1732

29%
12% 59%

c. Certificates CO MM' R INITIATED REEXAM ......................................................13 9
(1) All claims confirmed (2) All claims canceled

(3) Claim changes

18 13% 27 19% 94 68%

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Exhibit 8

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United States Patent and Trademark Office

PATENTS

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2250 Amendment by Patent Owner (R-5) - 2200 Citation of Prior

Art and Ex Parte Reexamination of Patents
2250 Amendment by Patent Owner (R-5)

37 CFR 1.121 Manner of making amendments in application.
*****

(j) Amendmenfs in reexaminafion proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.

37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
*****

(d) Making amendmenfs in a reexaminafion proceeding. A proposed amendment in

an ex parte or an infer parfes reexamination proceeding is made by fiing a paper

directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the

reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than fhe claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph

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applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," efc., should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim. (3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled."
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Sfafus of claims and supporf for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings: (1) The matter to be omitted by the reexamination proceeding must be enclosed in

brackets; and

(2) The matter to be added by the reexamination proceeding must be underlined.

(g) Numbering of pafenf claims preserved. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings. (i) Amendments made relafive fo pafenf. All amendments must be made relative to

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the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargemenf of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the
expiration of the patent.

(k) Amendmenfs nof effecfive unfil cerfificafe. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued.
*****

37 CFR 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers fhaf are to become a parf of fhe permanenf Unifed Sfafes Pafenf and Trademark Offce records in fhe file of a pafenf applicafion or a reexaminafion

proceeding.
(1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding, must be on sheets of paper that are the same size, not permanently

bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;

(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11

inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;

dark ink or its equivalent; and

(iv) Plainly and legibly written either by a typewriter or machine printer in permanent

(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition. (2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.

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(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.

(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for

drawings.
(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office's electronic filing system requirements.

(b) The applicafion (specificafion, including fhe claims, drawings, and oath or declarafion) or reexaminafion proceeding and any amendmenfs or correcfions fo fhe applicafion or reexaminafion proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and

(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language

together with a statement that the translation is accurate.
(2) The specification (including the abstract and claims) for other than reissue applications and reexamination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;

(ii) Text written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6); and
(iii) Only a single column of text.

(3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination proceeding (§ 1.72(b)).
*****
**

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Amendments to the patent (one which has not expired) may be filed by the patent owner with his or her request. See MPEP § 2221. Such amendments, however, may not enlarge the scope of a claim of the patent or introduce new matter. Amended or new claims which broaden or enlarge the scope of a claim of the patent should be rejected under 35 U.S.C. 305. The test for when an amended or "new claim enlarges the scope of an original claim under 35 U.S.C. 305 is the same as that under the 2-year limitation for reissue applications adding enlarging claims under 35 U.S.C. 251, last paragraph." In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP § 2258 for a discussion of enlargement of claim scope. For handling of new matter, see MPEP § 2270. Amendments proposed in a reexamination will normally be entered and be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, the amendments do not become effective in the patent until the reexamination certificate under 35 U.S.C. 307 is

issued.
No amendment will be permitted where the certificate issues after expiration of the patent. See 37 CFR 1.530(d)(3). The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. 154 (see MPEP § 2710 ef seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et. seq.). Any other relevant information should also be taken into account.

Amendmenf Enfry - Amendments which comply with 37 CFR 1.530(d)-(j) (and are formally presented pursuant to 37 CFR 1.52(a) and (b), and contain all fees required by 37 CFR 1.20(c)) will be entered in the reexamination file pursuant to the guidelines set forth in MPEP § 2234.
i. MANNER OF MAKING AMENDMENTS IN REEXAMINATION PROCEEDINGS

Amendments made in a reexamination proceeding must comply with the formal requirements of 37 CFR 1.52(a) and (b), as do all papers that are to become a part of the permanent USPTO file records in a patent application or proceeding. If an amendment is submitted to add claims to the patent being reexamined (i.e., to provide new claims), then excess claim fees pursuant to 37 CFR 1.20(c)(3) and (4) may be applicable to the presentation of the added claims. See MPEP § 2250.03. In addition, the provisions of 37 CFR 1.530(d)-(k) uniquely apply to amendments in both ex parte and infer parfes reexamination proceedings, as follows.
A. The Specification

37 CFR 1.530( d)( 1) relates to the manner of making amendments to the reexamination "specification" (other than the claims). It is not to be used for making amendments to the claims or the drawings.

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37 CFR 1.530(d)(1) requires that all amendments, which include any deletions or additions, must be made by submission of the full text of any paragraph to be changed in any manner, with markings (brackets and underlining) showing the changes. It should be noted that examiner's amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any paragraph to be changed, with markings. The exception for examiner's amendment set forth in 37 CFR 1.121 (g) does not apply to examiner's amendments in reexamination proceedings. It should further be noted that the requirement of 37 CFR 1.530(d)(1) applies regardless of whether the amendment is submitted on paper or on compact disc (pursuant to 37 CFR 1.96 or 1.825). The only exception to this requirement is that an entire paragraph of specification text may be deleted from the specification by a statement deleting the

paragraph without the presentation of the text of the paragraph.
In accordance with 37 CFR 1.530(d)(1), all paragraphs which are added to the specification must be submitted as completely underlined.

37 CFR 1.530(d)(1) requires that the precise point where each amendment is to be made must be indicated.

37 CFR 1.530(d)(1) defines the "markings" by reference to 37 CFR 1.530(f) as being brackets for deletion and underlining for addition. All bracketing and underlining is made in comparison to the original patent; not in comparison with the prior amendment.
Where a change is made in one sentence, paragraph or page of the patent, and the change increases or decreases the size of the sentence, paragraph or page, this will have no effect on the body of the reexamination "specification" (the copy of the patent). This is because all insertions are made as blocked additions of paragraphs, which are not physically inserted within the specification papers. Rather, each blocked paragraph is assigned a letter and number, and a caret written in the specification papers indicates where the blocked paragraph is to be incorporated. Therefore, a reexamination patent owner need not be concerned with page formatting considerations when presenting amendments to the Office.
B. The Claims

37 CFR 1.530(d)(2) relates to the manner of making amendments to the claims in a reexamination proceeding. It is not to be used for making amendments to the remainder of the specification or to the drawings.

37 CFR 1.530(d)(2) requires that:
(A) for each claim that is proposed to be amended by the amendment paper being submitted (the current amendment paper), the entire text of the claim must be presented with appropriate markings showing the changes to the claim; (B) for each proposed new claim which is added in the reexamination by the amendment paper being submitted (the current amendment paper), the entire text of the proposed new claim must be presented and it must be underlined

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throughout;
(C) a patent claim is canceled by

a direction to cancel that claim, there is no need

to present the text of the patent claim surrounded by brackets; and
(D) a proposed new claim (previously added in the reexamination) is canceled by

direction to cancel that claim.

a

It should be noted that examiner's amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any claim to be changed, with markings. The exception for examiner's amendment set forth in 37 CFR 1.121 (9) does not apply to examiner's amendments in reexamination proceedings. It should further be noted that the requirements of 37 CFR 1.530(d)(2) apply regardless of whether the amendment is submitted on paper or on compact disc (pursuant to 37 CFR 1.96 or 1.825).

In accordance with 37 CFR 1.530(e), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending, or canceled. The failure to submit the claim status will generally result in a notification to the patent owner of an informal response (see MPEP § 2266.02) prior to final rejection. Such an amendment submitted after final rejection will not be entered. Also in accordance with 37 CFR 1.530(e), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for the changes made in the claim(s), support for any insertions and deletions). The failure to submit an explanation will generally result in a notification to the patent owner that the amendment prior to final rejection is not completely responsive since the failure to set forth the support in the disclosure goes to the merits of the case (see MPEP § 2266.01). Such an amendment submitted after final rejection will not be entered.
37 CFR 1.530(f) identifies the type of markings required in the claim to be amended as underlining for added material and single brackets for material deleted.

37 CFR 1.530(9) states that original patent claims may not be renumbered. A patent claim retains its number even if it is canceled in the reexamination proceeding, and the numbering of any added claims must begin after the last original patent claim.
c. The Drawings

With respect to amendment of the drawings in a reexamination proceeding, see

MPEP § 2250.01.
Form paragraph 22.12 may be used to advise patent owner of the proper manner of making amendments in an ex parte reexamination proceeding.

D. Form Paragraphs - Ex Parte Reexamination

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~ 22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)-ü)

Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-ü), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR 1.20(c).
Examiner Note

This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.
~ 22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR 1.530( d)-ü)

The amendment filed (1) proposes amendments to (2) that do not comply with 37 CFR 1.530( d)-(j, which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present ex parte reexamination proceeding is required. A shortened statutory period for response to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, prosecution of the present ex parte reexamination proceeding will be terminated, and a reexamination certificate will issue. 37 CFR

1.550(d).
Examiner Note

This paragraph may be used for any 37 CFR 1.530(d)-ü) informality as to a proposed amendment submitted in a reexamination proceeding prior to final rejection. After final rejection, the amendment should not be entered and patent owner informed of such in an advisory Office action using Form PTOL 467.
The cover sheet to be used for mailing the notification to the patent owner will be PTOL-473. As an alternative to using form paragraph 22.13, it would also be appropriate to use form PTOL-475.
Note that if the informal amendment is submitted after final rejection, form paragraph 22.13 and form PTOL-475 should not be used. Rather an advisory Office action (using form PTOL-467) should be issued indicating that the amendment was not entered. In the "Other" section, it should be explained that the amendment was not entered because it does not comply with 37 CFR 1.530(d)-(j, which sets forth the manner of making amendments in reexamination proceedings.

E. Form Paragraphs - Inter Partes Reexamination
See MPEP § 2666.01 for the form paragraphs to use in infer parfes reexamination

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proceedings, in advising the patent owner as to the manner of making

amendments.
II. ALL CHANGES ARE MADE VIS-A-VIS THE PATENT BEING REEXAMINED

When a reexamination certificate is printed, all underlined matter is printed in italics and all brackets are printed as they were inserted in the proceeding in order to thereby show exactly which additions and deletions have been made in the patent via the reexamination proceeding. In accordance with 37 CFR 1.530(i), all amendments to the patent being reexamined must be made relative to the patent

specification in effect as of the date of the fiing of the request for reexamination.
The patent specification includes the claims and drawings. If there was a prior change to the patent (made via a prior reexamination certificate, reissue of the patent, certificate of correction, etc.), the first amendment must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the request for reexamination, and not relative to the prior amendment.
III. AMENDMENT AFTER THE PATENT HAS EXPIRED

Pursuant to 37 CFR 1.5300), "(n)o amendment may be proposed for entry in an expired patent." Thus, if a patent expires during the pendency of a reexamination proceeding for a patent, all amendments to the patent claims and all claims added during the proceeding are withdrawn. This is carried out by placing a diagonal line across all amended and new claims (and text added to the specification) residing in the amendment papers. The patent owner should be notified of this in the next Offce action. The Office action will hold the amendments to be improper, and state that all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by a certificate after the expiration of the patent. 37 CFR 1.5300) further states that "(m)oreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent."

Thus, at the time the NIRC is to be issued, the examiner should ensure that all

rejected and objected to claims are canceled. The examiner should issue an examiner's amendment canceling any such claims not already canceled.
The cancellation of the original patent claims is the only "amendatory" change permitted in an expired patent.
iv. EXAMPLES

A substantial number of problems arise in the Office because of improper submission of proposed amendments in reexamination proceedings. The following examples are provided to assist in the preparation of proper proposed amendments

in reexamination proceedings.

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(A) Original Patent Description Or Patent Claim Amended

(1) Specification - submit a copy of the entire paragraph (of the specification of the patent) being amended with underlining and bracketing. Thus, the amendment would be presented as follows:
Replace the paragraph beginning at column 4, line 23 with the following:

Scanning (is) are controlled by clocks which are, in turn, controlled from the display tube line synchronization. The signals resulting from scanning the scope of the character are delivered in parallel, then converted into serial mode through a shift register, wherein the shift signal frequency is controlled by a clock that is controlled from the display tube line synchronization.

(2) Claims - for changes to the patent claims, one must submit a copy of the entire patent claim with the amendments shown by underlining and bracketing. Thus, the amendment would be presented as follows:
Amend claim 6 as follows:
Claim 6. (amended), The apparatus of claim (5) 1 wherein the (first) second

piezoelectric element is parallel to the (second) third piezoelectric element.
If the dependency of any original patent claim is to be changed by amendment, it is proper to make that original patent claim dependent upon a later filed higher numbered claim.

(B) Cancellation of Entire Claim(s) (1) Original patent claim canceled - in writing, direct cancellation of the entire patent claim.
Cancel claim 6.

(2) Proposed new claim (previously added in the reexamination) canceled - in writing, direct cancellation of the entire claim.

Cancel claim 15.
(C) Presentation Of New Claims Each proposed new claim (i.e., a claim not found in the patent, that is newly presented in the reexamination proceeding) should be presented with underlining throughout the claim. Claim 7. The apparatus of claim 5 further comprising electrodes attaching to said oppqsite fac~sof the second and third piezQelectricelements.
Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent. If new claims have been added to the reexamination proceeding which are

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later canceled prior to the issuance of the reexamination certificate, the examiner will renumber, at the time of preparing the NIRC for subsequent issuance of the certificate, any remaining new claims in numerical order to follow the highest number of the claims in the original patent. A claim number previously assigned to a new claim that has been canceled should not be reassigned to a different new claim during the reexamination proceeding. For example, if new claim 5 added in a prior amendment is canceled in a later amendment, a different new claim added in a later amendment during the reexamination proceeding would be claim 6. Of course, at the time of preparing the NIRC, claim 6 would be renumbered for issue of the reexamination certificate as claim 5. (D) Amendment Of New Claims An amendment of a new claim (i.e., a claim not found in the patent, that was previously presented in the reexamination proceeding) must present the entire text of the new claim containing the amendatory material, and it must be underlined throughout the claim. The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reexamination are made vis-a-vis the original patent, and not in comparison with any prior amendment. Although the presentation of the amended claim does not contain any indication of what is changed from a previous version of the claim, patent owner must point out what is changed, in the "Remarks" portion of the amendment. Also, as per 37 CFR 1.530(e), each change made in the claim must be accompanied by an explanation of the support in the disclosure of the patent (i.e., the reexamination specification) for the change.
(E) Amendment Of Original Patent Claims More Than Once The following example illustrates proper claim amendment of original patent claims in reexamination proceedings, where more than one amendment to a claim is made:
(1) Patent claim.

Claim 1. A cutting means having a handle portion and a blade portion.
(2) Proper first amendment format.

Claim 1. (amended), A (cutting means) knif~ having a bQne handle portion and a
nQtched blade portion.

(3) Proper second amendment format.

Claim 1. (twice amended), A (cutting means) knife having a handle portion and a serrated blade portion.

Note that the second amendment must include (1) the changes previously presented in the first amendment; i.e., (cutting means) knife, as well as (2) the new changes presented in the second amendment; i.e., serraled. The word bone was presented in the first amendment and is now to be deleted in the second amendment. Thus, "bone" is NOT to be shown in brackets in the second amendment. Rather, the word "bone" is simply omitted from the claim, since "bone" never appeared in the patent. The word notched which was presented in the first amendment is replaced by the word serrated in the second amendment. The word

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notched is being deleted in the second amendment and did not appear in the patent; accordingly, "notched" is not shown in any form in the claim. The word serrated is being added in the second amendment, and accordingly, "serrated" is added to the claim and is underlined. It should be understood that in the second amendment, the deletions of "notched" and "bone" are not changes from the original patent claim text and therefore, are not shown in the second amendment. In both the first and the second amendments, the entire claim is presented only with the changes from the original patent text. If the patent expires during an ex parte or infer parfes reexamination proceeding and the patent claims have been amended in that ex parte reexamination proceeding, the Office will hold the amendments as being improper, and all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by certificate after the expiration of
the patent.

v. CROSS REFERENCES TO OTHER AREAS

(A) For clerical handling of amendments, see MPEP § 2270 for ex parte reexamination proceedings, and see MPEP § 2670 for infer parfes reexamination

proceedings.
(B) As to amendments in a merged proceeding, see MPEP § 2283 for an ex parte reexamination merged with another ex parte reexamination and MPEP § 2285 for an ex parte reexamination merged with a reissue application. If an infer parfes reexamination proceeding is included in the merger, see MPEP § 2686.01 and §

2686.03.
(C) As to amendments in a pending reexamination proceeding where a reexamination certificate has issued for the patent based on a prior concluded reexamination, pursuant to MPEP § 2295, any amendment made in the pending reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate (for the prior concluded reexamination) are a part of the original patent. All italicized text of the certificate is considered as if the text was present without italics in the original patent. Further, any text of the reexamination certificate found in brackets is considered as if it were never present in the patent at alL. Thus, for making an amendment in the pending reexamination, all italicized text of the reexamination certificate is presented in the amendment without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment. (D) As to amendments in a pending reexamination proceeding where a reissue patent has been granted, pursuant to MPEP § 2285, subsection II.A., an amendment in a reexamination of a reissued patent is made the same way as in a reexamination of a reexamined patent (i.e., as per MPEP § 2295). Thus, all italicized text of the reissue patent is presented in the amendment (made in the pending reexamination proceeding) without italics. Further, any text found in brackets in the reissue patent is omitted in the amendment (made in the pending

reexamination proceeding).
(E) For handling a dependent claim in reexamination proceedings, see MPEP §

Case 3:08-cv-00070-BTM-CAB

Document 15-5

Filed 03/24/2008

Page 34 of 34

2260.01.
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