The third party requested reexam as Ex-parte as following ,

http://lh3.ggpht.com/_PDJiG7lKOYI/TR5r3GI4t6I/AAAAAAAAANg/ntNIZi92zjQ/s800/clip_image002.jpg

that i believe it has its own downside and it ultimately strengthen our 774 patent and possible we can amend and rewrite claims.

Ex Parte and Inter Partes Patent Re-Examination

As you know by now, the Blackboard patent has been challenged at the USPTO by separate requests filed by the SFLC and D2L respectively. SFLC filed what’s known as an ex parte request, while D2L filed what’s known as an inter partes request. I think it’s important for the community to become familiar with these two strategies because we’re likely to see them employed again in our future. Seb has some nice commentary up about the basics of the specific situation with the Blackboard patent. (Be sure to read the comments; there’s one by one of the leading researchers on patent re-examination.) What follows here is more of a high-level overview of the legal strategies in general.

Ex Parte filings are essentially fire-and-forget requests. The main role that the filing party has is in making the initial request that the Patent Office look at new evidence regarding the patentability of the alleged innovation. The USPTO has 90 days from that initial request to decide whether they are essentially going to take the case or not. If they “grant” the re-examination request, they will list which claims they intend to re-examine. Remember that Bb’s patent, for example, has 44 claims. The USPTO can look at some, all, or none of them in response to the request. So within 90 days of the SFLC’s filing, we’ll know whether any of Bb’s claims are being reconsidered. At this point, the patent holder may (but does not have to) file a response to the USPTO’s granting statement. One of the things that the patent holder can do at this point is amend the claims, i.e., rewrite them so that the new evidence doesn’t invalidate them anymore. If the patent holder files a response, then the ex parte filer may file one reply to that response. After that, the USPTO rules.

One of the advantages of this strategy is that it’s cheap. It generally costs a total of about $10K to prepare and file. So you can think of an ex parte challenge as a kind of asymmetric warfare strategy for organizations with little money (like Open Source foundations). On the downside, ex parte challenges can actually have the effect of strengthening the patent. To begin with, any patent that survives a challenge is generally viewed as having been doubly confirmed by the USPTO in any subsequent trials. In addition, since the patent holder has an opportunity to amend the claims, the patent can actually be rewritten to be stronger during the process.

by Michael Feldstein