At the end of 2020, Unified filed two ex parte reexamination (Reexam) requests against patents owned by Express Mobile Inc., a prolific patent troll that has sued over eighty different companies for website development features. In early August 2021, the Reexam of U.S. Patent 7,594,168 concluded with a “Notice of intent to issue a Reexamination Certificate” that likely impacts Express Mobile’s infringement theories and still leaves open future questions about validity. The examiner narrowed claims that Express Mobile has argued repeatedly in court were much broader. For the first time, you can view every ex parte filing since 2000 on Unified’s Portal here.
This reaffirms the Northern District of California’s and the Middle District of Florida’s stays of their cases involving the challenged patents. As the notice of intent comes less than one year after the filing of a request, patentees will be hard-pressed to argue that the ex parte reexamination process is too long to wait for a streamlining of their myriad infringement claims—if the patent is valid, it should be more likely that the reexamination will end quickly, and very little burden would be faced by the applicant due to a delay. On the other hand, if the challenged claims are invalid or substantially narrowed past the point of reasonable infringement, it would be a waste of resources to litigate. Additionally, in Express Mobile’s case, had the courts proceeded while the reexamination was still pending, the claim construction briefing would not have had the benefit of Express Mobile’s affirmative, binding disavowal of scope, and the examiner’s basis for allowance, itself probative for claim construction. See, e.g., Salazar v. Procter & Gamble Co., 414 F. 3d 1342, 1347-48 (Fed. Cir. 2005). That is particularly true here, where the examiner concluded that Express Mobile’s references to the specification amounted to a definition, i.e., lexicography. Notice of Intent, pp.7-8.
And the Office went further. For example, the examiner observed that if any non-object oriented formatting or styles are used in the building of a web page, it would not infringe the ’168 Patent. Id., p.4. Express Mobile disagreed with the Examiner for construing “entirely” as “only” in Claim 1, but its arguments beg the question of what “entirely” does mean, if not “only,” and whether Express Mobile has a viable infringement case based on the proper construction of this term.
Additionally, it will not be enough for Express Mobile to argue vague notions of what a timeline or transformation of a style is anymore: the transformation of an image object is limited to the description at (c), the transformation of a button object is limited to the description at (g) the timeline of both image and button objects is limited to examples at (d), and the claims specify that these settings are required for an image or button object for “each” web page on the site. Id., 5-6; see also ’168 Patent, 30:32-33:46. It is unclear whether any of the pending product accusations meet these requirements.
And while Express Mobile filed a nonbinding statement disagreeing with the examiner’s characterizations, such post hoc self-serving statements are entitled to little weight, although they keep the interpretation open for an invalidity litigant or IPR petitioner construing the claims as broadly as Express Mobile. For example, Express Mobile disagreed with the examiner that the statements regarding image and button objects are definitional, citing the specification’s use of “can” instead of “must.” ’168 Patent, 30:32-33:46. This does not respond to the examiner’s point; “can” is not necessarily synonymous with “may,” and it should indicate limitation if the list refers to the only settings the user could employ. Here, Express Mobile’s points to no language that indicates that the “can” is exemplary and not limiting, as the examiner concluded.
The certificate also does not absolve Express Mobile of the need to address invalidity in its pending cases. The Notice made it clear that if a reference was not cited in its actions, then it was only given a cursory review, and no references other than the art submitted with the request appear to have been addressed by the examiner. Notice of Intent, 3.
Reexaminations are a valuable tool, particularly with Fintiv lingering. The Reexamination Unit has recently been processing requests much faster than the past, making their use to obtain stays a prudent option. Reexaminations are also a less expensive option (and sometimes faster way) to extract claim scope disavowals and highlight infringement theory weaknesses even though there is little control over what the examiner considers.