What the Director's Letter Didn't Say

    By Kevin E. Noonan --

As reported by Patent Docs last week, U.S. Patent and Trademark Office Director Jon Dudas (at right) responded to Congressman Howard Berman's (D-CA) April letter posing a number of questions raised by Director Dudas' February testimony before the House Subcommittee on Courts, the Internet and Intellectual Property.  Last week's report recounted the Director's answers to a number of those questions, including patent application pendency, deferred examination, and Patent Office reorganization efforts.

Director Dudas' letter also addressed the most explosive question (allegation) in Congressman Berman's letter:  whether senior Patent Office officials, including Director Dudas himself, had acted improperly by meeting with Research in Motion (RIM) regarding re-examination of NTP's patents during the RIM v. NTP litigation.  Director Dudas maintained that there was no impropriety:

Research in Motion (RIM) requested a meeting to discuss whether the United States would participate as amicus curiae in support of a petition for rehearing that RIM was pursuing in the Court of Appeals for the Federal Circuit.  The Department of Commerce, led by then-Acting General Counsel Jane Dana, held a meeting on this subject.  In attendance were Ms. Dana, Joan Maginnis, Assistant General Counsel for Finance and Litigation of the Department of Commerce, members of the Appellate staff of the Civil Division of the Department of Justice, and Mr. Toupin and John Whealan, Deputy General Counsel for Intellectual Property and Solicitor, from the USPTO.  A member of the Commercial Litigation Branch of the Civil Division of the Department of Justice also participated by phone.

The subject of discussion was RIM'S request that the United States support its position in the Court of Appeals for the Federal Circuit that patent infringement not be found when alleged infringement includes acts outside the United States.  Citing the USPTO's policy of not discussing any aspect of a pending USPTO reexamination, Ms. Dana and all other government representatives in attendance refused to discuss or listen to statements, questions, or arguments regarding any matter pending in reexamination.  The government did not make the amicus filing that RIM requested.

As stated, the USPTO's policy prohibits ex parte communications that directly relate to matters pending on reexaminations.  This policy does not prohibit contacts with anyone with respect to matters that are not at issue in proceedings before the USPTO.  Thus, for example, the USPTO officials regularly meet with patentees and members of the patent bar, even though those parties may be pursuing matters before the Office.  In such conversations, consistent with the policy followed during the meeting with RIM representatives, its officials do not discuss particular matters pending before the Office.

While reassuring, this answer does not fully address the allegations, which include that the Office took actions at times calculated to influence the litigation:

• NTP alleged not one meeting, but a series of ex parte meetings with RIM representatives.  These allegations were supported by an affidavit from Kevin P. Anderson relating information obtained under Freedom of Information Act requests.

• Documents released under FOIA contain unexplained redactions not accompanied by a claim of privilege (executive, no doubt).

• PTO staff prepared synopses of the reexamination and the patent infringement action for the Director prior to the meeting with RIM representatives (and it is not clear why this would be necessary if all that was discussed was participation in an amicus brief.)

• PTO actions were motivated by political pressure from Congress (whose Blackberry accounts were jeopardized by the litigation), including issuing a reexamination timeline as a result of an improper (according to NTP) request from the Canadian government.  This timeline was sent to RIM, but not NTP, prior to a court hearing on whether the damages phase of the litgation should be stayed, and RIM used it to sandbag NTP on the morning of the hearing.  (Amazingly, NTP presented evidence that the PTO was working to prepare the timeline before the Canadian government request, allegedly because of ex parte communications between "senior Patent Office officials" and RIM.)

• NTP alleges (and presents evidence in support of its allegations) that RIM had the Office comment not on an amicus brief, but on its brief asking the court not to impose an injunction.

• The PTO issued a 121-page rejection just five business days, and nine calendar days, after NTP responded to an Office Action (resulting in the Action being issued prior to a hearing in the litigation on whether the court would grant NTP an injunction that would have shut down RIM's business in the U.S.).

And Director Dudas' answer also expands the scope of the individuals who are now known to have participated in these meetings.  Given the penchant for this Congress to exercise oversight sorely lacking during the first six years of this administration, the primary effect of Director Dudas' answer may be in creating a list of the individuals the committee will subpoena to testify about these meetings, and to give answers to the remaining questions.

For additional information regarding this topic, please see:

• "Director Answers House Subcommittee's Questions," June 12, 2008

Comments

[e6k]

Let me get this straight, people who are messing with congress's blackberry accounts are asking congress for oversight?

Mhmmmm, that'll happen.

[Kevin E. Noonan]

Dear e:

You underestimate the "blood in the water" instincts Congress has for this administration. Not guaranteeing it will happen, but it could (did you ever see the scene in Casablana where the policeman is "shocked" that gambling is going on at Rick's?).

Thanks for the comment.

[something fishy]

If USPTO's policy (and the APA!) prohibits ex parte communications on pending matters, why was a whole collection of senior administration officials present? They could have just said "sorry, no comment"