In 2020, Unified filed an ex parte reexamination (Reexam) request against patents owned by Sound View Innovations, a non-practicing entity (NPE) that has sued various companies for their use of widely-adopted Internet technologies. In early October 2021, the Reexam of U.S. Patent 6,725,456 concluded with a “Notice of intent to issue a Reexamination Certificate” (Notice of Intent) that highlights a problematic habit of NPEs like Sound View:  reading a patent broadly when accusing others of infringing and narrowly when its validity is in question.  The Notice of Intent casts serious doubt on Sound View’s infringement theories and still leaves open future questions about validity. The examiner narrowed claims that Sound View has asserted repeatedly were much broader in court complaints. The Reexam (and every ex parte reexamination since 2000) can be found on Unified’s Portal here. 

Challenged claim 13 of the ’456 patent relates to a method of ensuring a particular quality of service for an application in a computer system. The claim recites a “resource reservation” and the examiner credited Sound View’s arguments that the claim required “two separate and distinct values to be associated with each resource reservation[.]” Notice of Intent, p. 6;  see Office Action Response, p. 19.  In particular, the examiner took the position that the resource reservation must specify both a “weight” and a “minimum amount of resources.” Id. The examiner held that specifying a minimum amount of resources in a resource reservation, which results in a weight being associated with that resource reservation, is not sufficient to read on the claim. Conversely, specifying a weight in a resource reservation, which results in a minimum amount of resources being allocated, is also not sufficient to read on the claim. Rather, as Sound View argued, allocating both a weight and a minimum amount of resources was needed according to the examiner. See Office Action Response, p. 23.

This claim interpretation by the examiner begs the question of whether Sound View has a viable infringement case based on its narrowing arguments and the examiner’s construction of these claim elements. See Sound View Innovations, LLC v. Dish Network, LLC, Civ. Action No. 1:19-cv-03707, Paper 1 at 48-49. It will not be enough for Sound View to argue that a system includes a resource reservation having a set minimum amount of resources OR a set weight (percentage) of the total resources that results in the other value occurring. That is, the resource reservation must include BOTH a set minimum amount of resources AND a set weight (percentage) of the total resources. It is unclear whether any of the pending product accusations meet these requirements.

Reexaminations are a valuable tool, particularly with Fintiv lingering. Due to the speed of reexamination proceedings, stays in co-pending district court litigations are warranted. As the conclusion of a reexamination may come as soon as one year after the filing of a request, patentees will be hard-pressed to argue that the ex parte reexamination process is too long to wait for a streamlining of their myriad infringement claims—if the patent is valid, it should be more likely that the reexamination will end quickly, and very little burden would be faced by the applicant due to a delay. On the other hand, if the challenged claims are invalid or substantially narrowed past the point of reasonable infringement, it would be a waste of resources to litigate.

Additionally, reexaminations are also a less expensive option (and sometimes faster way) to extract claim scope disavowals and highlight infringement theory weaknesses even though there is little control over what the examiner considers. Thus, when claim construction decisions in district court proceedings are deferred pending reexamination proceedings, the court has the benefit of the patent owner’s affirmative, binding disavowal of scope, and the examiner’s basis for allowance, itself probative for claim construction. See, e.g., Salazar v. Procter & Gamble Co., 414 F. 3d 1342, 1347-48 (Fed. Cir. 2005). That is particularly true here, where the examiner concluded that Sound View’s references to the specification and discussion of the requirements of the claim amounted to a narrowing of the scope of the patent. Notice of Intent, pp. 5-8.