IMO some are making way too much of the impact of an IPR.

ALL, yes ALL patents in existence are subject to the possibility of an IPR being processed at any time, assuming they can find some stretch-of-the-imagination "prior art". That's all it takes, and the PTO is likely to go forward, unless they are witty enough to determine that the IPR is based on BS at the outset, before close examination. PTSC even experienced a situation where its '336 patent successfully made it through a lengthy re-exam, and before the slightly amended patent became "official"/published, another IPR was processed citing the EXACT SAME prior art as was just examined, and the PTO STILL accepted it for further processing. This was later turned around through directing attention to their foul up, but PTSC lost about a year of potential higher dollar licensing due to the cloud hanging over (and during this time signed a horrible, low dollar license with Apple, which created an even worse situation).

But my point is that it's not like IPRs are in any way "unusual", especially if the patent in question has significant value. No value, no IPRs. High value, IPRs should be expected.

Further, the court knows absolutely that a primary purpose of an IPR is to attempt to distrupt/delay of court action by questioning the validity of the patent in suit. After all, to verify infringement, the patent must be valid. However, it is my understanding that the PTO is responsible for determining validity, and the court is responsible to determine infringement of the valid patent. Further, it is my understanding the the court is supposed to ignore IPRs/re-exams and just consider the patent as valid. In other words, the court should not unilaterally place a Stay on the proceeding due to a re-exam in process.

To clarify that last statement, in my acknowledged limited experience with this stuff, I have not yet seen a situation where a court granted a Motion for a Stay due to a re-exam where that Motion was not agreed, i.e., the Plaintiff and Defendant agreeing that a Stay is appropriate. In other words, an IPR being accepted by the PTO does not automatically cause the court proceeding to stop and wait. EDIG would have to consent, I believe.

So I agree that a re-exam probably does impact licensing (dollars), just because it introduces a level of doubt, and thus risk. I just don't believe it is quite as big a deal as some are making it out to be. Again, commonplace and expected. One big thing (IMO) in our favor here, that hasn't been mentioned at all, is that the patents affected by the IPR are relatively recent. The PTO only just recently examined the patent applications and determined that the patents are valid.

Now, Claims Construction. IMO success in this part of the legal process is at least as significant as an IPR granted by the PTO or a re-exam. It can be leveraged to bring a quick close to a case via Motion for Summary Judgment (an action which EDIG inexplicibly did not take subsequent to CC success re: the '108; IMO an action which if carried through probably could have netted a great deal more than the miniscule settlements).

Finally, NEITHER the granting of an IPR/re-exam NOR a so-so CC result (or even a weak CC result) are an "end all". They are hurdles. Ones we of course want to avoid if possible, but ones that can be overcome with clarifying amendments to patent claims in the case of the PTO, or successful argument in court based on whatever CC result.

So it comes down to time, and how much risk is hanging. It's not over till it's over, and that's IMO a long while off - in the worst case scenario.

Best case, i.e., IPR denied by the PTO and strong CC result from the court, things can move much more swiftly and involve larger dollars.

FWIW,

SGE