Mekiki Co. Ltd. et al v. Facebook Inc.

Filing 67

Declaration of Elizabeth L. Stameshkin in Support of 66 MOTION to Stay Pending Reexamination MOTION to Bifurcate Damages from Liability filed byFacebook Inc.. (Attachments: # 1 Exhibit 1-A, # 2 Exhibit 1-B, # 3 Exhibit 2-A, # 4 Exhibit 2-B, # 5 Exhibit 3-A, # 6 Exhibit 3-B, # 7 Exhibit 4, # 8 Exhibit 5, # 9 Exhibit 6, # 10 Exhibit 7, # 11 Exhibit 8, # 12 Exhibit 9, # 13 Exhibit 10, # 14 Exhibit 11)(Related document(s) 66 ) (Stameshkin, Elizabeth) (Filed on 2/8/2011)

EXHIBIT 6

2602

2602

MANUAL OF PATENT EXAMINING PROCEDURE

Citation of Prior Art [R-7]

35 U.S.C. 301. Citation of prior art.
Any person at any time may cite to the Office in writing prior
art consisting of patents or printed publications which that person
believes to have a bearing on the patentability of any claim of a
particular patent. If the person explains in writing the pertinency
and manner of applying such prior art to at least one claim of the
patent, the citation of such prior art and the explanation thereof
will become a part of the official file of the patent. At the written
request of the person citing the prior art, his or her identity will be
excluded from the patent file and kept confidential.

37 CFR 1.501. Citation of prior art in patent files.
(a) At any time during the period of enforceability of a
patent, any person may cite, to the Office in writing, prior art consisting of patents or printed publications which that person states
to be pertinent and applicable to the patent and believes to have a
bearing on the patentability of any claim of the patent. If the citation is made by the patent owner, the explanation of pertinency
and applicability may include an explanation of how the claims
differ from the prior art. Such citations shall be entered in the
patent file except as set forth in §§ 1.502 and 1.902.
(b) If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the
citation papers must be submitted without any identification of the
person making the submission.
(c) Citation of patents or printed publications by the public
in patent files should either: (1) Reflect that a copy of the same
has been mailed to the patent owner at the address as provided for
in § 1.33(c); or in the event service is not possible (2) Be filed
with the Office in duplicate.

37 CFR 1.902. Processing of prior art citations during an
inter partes reexamination proceeding.
**>Citations by the patent owner in accordance with § 1.933
and by an inter partes reexamination third party requester under §
1.915 or § 1.948 will be entered in the inter partes reexamination
file. The entry in the patent file of other citations submitted after
the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under
either § 1.913 or § 1.948, will be delayed until the inter partes
reexamination proceeding has been concluded by the issuance and
publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.<

Public Law 106-113 did not affect the manner of
the public’s citation of prior art under 37 CFR 1.501
in a patent. Likewise, it did not affect the Office’s
handling of a 37 CFR 1.501 prior art citation in a
patent where no reexamination proceeding is pending
for that patent when the citation is filed.
Where an inter partes reexamination proceeding is
pending when a prior art citation is filed, the following applies:

Rev. 7, July 2008

If the prior art citation satisfies 37 CFR 1.501 and is
submitted prior to an order to reexamine, the cited
documents (citations) will be considered in an inter
partes reexamination proceeding as a prior art citation
would be considered in an ex parte reexamination
proceeding. See MPEP § 2206.
If the prior art citation satisfies 37 CFR 1.501 and is
submitted after an order to reexamine, the citation
will be treated as follows:
(A) A patent owner citation will normally be considered if it is submitted in time to do so before the
reexamination certificate issues.
(B) A third party requester citation will be considered if it is submitted as part of a third party requester
comments submission under 37 CFR 1.947 or
1.951(b) (made as required by 37 CFR 1.948), or in a
properly filed request for reexamination under
37 CFR 1.915 or 1.510.
(C) Any other prior art citation satisfying 37 CFR
1.501 which is submitted after an order to reexamine
will be retained (stored) in the Central Reexamination
Unit or Technology Center (in which the reexamination proceeding is being examined) until the reexamination is concluded >by the issuance and publication
of a reexamination certificate<, after which it will be
placed in the file of the patent. 37 CFR 1.902.
See MPEP §§ 2202 through 2206 and 2208 for the
manner of making such citations and Office handling
of same.

2609

Inter Partes Reexamination [R-7]

The inter partes reexamination statute and rules
permit any third party requester to request inter partes
reexamination of a patent which issued from an original application was filed on or after November 29,
1999, where the request contains certain elements (see
37 CFR 1.915(b)) and is accompanied by the fee
required under 37 CFR 1.20(c)(2). The Office initially
determines if “a substantial new question of patentability” (35 U.S.C. 312(a)) is presented. If such a new
question has been presented, reexamination will be
ordered. The reexamination proceedings which follow
the order for reexamination are somewhat similar
to regular examination procedures in patent applications; however, there are notable differences. For
example, there are certain limitations as to the kind of
rejections which may be made, a third party requester

2600-8

OPTIONAL INTER PARTES REEXAMINATION

may participate throughout the proceeding, there is an
“action closing prosecution” and a “right of appeal
notice” rather than a final rejection, special reexamination forms are to be used, and time periods are set to
provide “special dispatch.” When the prosecution of
an inter partes reexamination proceeding is terminated, an inter partes reexamination certificate is
issued to indicate the status of all claims following the
reexamination and concludes the reexamination proceeding.
The basic characteristics of inter partes reexamination are as follows:
(A) Any third party requester can request inter
partes reexamination at any time during the period of
enforceability of the patent (for a patent issued from
an original application filed on or after November 29,
1999);
(B) Prior art considered during reexamination is
limited to prior patents or printed publications applied
under the appropriate parts of 35 U.S.C. 102 and 103;
(C) A substantial new question of patentability
must be present for reexamination to be ordered;
(D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;
(E) Decision on the request must be made not
later than three months from its filing date, and the
remainder of proceedings must proceed with “special
dispatch” within the Office;
(F) If ordered, a reexamination proceeding will
normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;
(G) The scope of the patent claims cannot be
enlarged by amendment;
(H) Reexamination and patent files are open to
the public, but see paragraph (I) below;
(I) The reexamination file is scanned to provide
an electronic copy of the file. All public access to and
copying of reexamination proceedings may be had
from the electronic copy. The paper file is not available to the public.
>Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and
published examining procedures do not countenance
so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct themselves accordingly. For example, it is expected that
submissions of papers that are not provided for in the

2610

reexamination regulations and/or appear to be
excluded by the regulation will either be filed with an
appropriate petition to accept the paper and/or waive
the regulation(s), or not filed at all. Parties are advised
that multiple submissions, such as a reply to a paper
opposing a petition and a sur-reply directed to such a
reply are not provided for in the regulations or examining procedures governing inter partes reexamination. It is expected that the parties will adhere to the
provisions of 37 CFR 10.18(b) throughout the course
of a reexamination proceeding.<

2610

Request for Inter Partes Reexamination [R-7]

35 U.S.C. 311. Request for inter partes reexamination
(a) IN GENERAL.— Any third-party requester at any time
may file a request for inter partes reexamination by the Office of a
patent on the basis of any prior art cited under the provisions of
section 301.
(b) REQUIREMENTS.— The request shall—
(1) be in writing, include the identity of the real party in
interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; and
(2) set forth the pertinency and manner of applying cited
prior art to every claim for which reexamination is requested.
(c) COPY.— The Director promptly shall send a copy of the
request to the owner of record of the patent.

37 CFR 1.913. Persons eligible to file request for inter
partes reexamination.
Except as provided for in § 1.907, any person other than the
patent owner or its privies may, at any time during the period of
enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file
a request for inter partes reexamination by the Office of any claim
of the patent on the basis of prior art patents or printed publications cited under § 1.501.

37 CFR 1.915.
reexamination.

Content of request for inter partes

(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).
(b) A request for inter partes reexamination must include the
following parts:
(1) An identification of the patent by patent number and
every claim for which reexamination is requested.
(2) A citation of the patents and printed publications
which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner
of applying the patents and printed publications to every claim for
which reexamination is requested.

2600-9

Rev. 7, July 2008

2636

MANUAL OF PATENT EXAMINING PROCEDURE

(D) Reporting Events to PALM - The PALM system is used to monitor major events that take place in
processing reexamination proceedings. All major
examination events are reported. The mailing of
examiner’s actions are reported, as well as owner’s
responses and third party requester comments. The
CRU support staff is responsible for reporting these
events using the reexamination icon and window initiated in the PALM EXPO program. Events that will be
reported include the following:
(1) Determination Mailed-Denial of request
for reexamination;
(2) Determination Mailed-Grant of request for
reexamination;
(3) Petition for reconsideration of determination received;
(4) Decision on petition mailed-Denied;
(5) Decision on petition mailed-Granted;
(6) Mailing of all examiner actions;
(7) Patent owner responses to Office Actions
(8) Third party requester comments after a
patent owner response.
All events will be permanently recorded and displayed in the “Contents” portion of PALM. In addition, status representative of these events will also be
displayed.
(E) Status Reports - Various weekly “tickler”
reports can be generated for each TC, given the event
reporting discussed above. The primary purpose of
these computer outputs is to assure that reexaminations are, in fact, processed with “special dispatch”.

2636
I.

Assignment of Reexamination [R-7]
EXAMINER ASSIGNMENT OF THE REEXAMINATION PROCEEDING

Reexamination requests will normally be assigned
to the Central Reexamination Unit (CRU) art unit
which examines the technology (Chemical, Electrical,
Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. In that art
unit, the **>Supervisory Patent Examiner (SPE)<
assigns the reexamination request to a primary examiner, other than the examiner that originally examined
the patent (see “Examiner Assignment Policy”
below), who is most familiar with the claimed subject
matter of the patent. **>In an extremely rare situa-

Rev. 7, July 2008

tion, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may
be assigned to an assistant examiner if no knowledgeable primary examiner is available.< In such an
instance a primary examiner must sign all actions and
take responsibility for all actions taken.
(A)

Examiner Assignment Policy

It is the policy of the Office that the CRU *>SPE<
will assign the reexamination request to an examiner
different from the examiner(s) who examined the
patent application. Thus, under normal circumstances,
the reexamination request will not be assigned to a
primary examiner or assistant examiner who was
involved in any part of the examination of the patent
for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the
examination of the parent of the patent. This would
preclude assignment of the request to an examiner
who was a conferee in an appeal conference or panel
review conference in an earlier concluded examination of the patent (e.g., the application for patent, a
reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated
in preparing the Office action which is preceded by
the conference.
Exceptions to this general policy include cases
where the original examiner is the only examiner with
adequate knowledge of the relevant technology to
examine the case. In the unusual case where there is a
need to assign the request to the original examiner, the
assignment must be approved by the CRU Director,
and the fact that such approval was given by the CRU
Director must be stated (by the examiner) in the decision on the request for reexamination.
It should be noted that while an examiner who
examined an earlier concluded reexamination proceeding is generally excluded from assignment of a
newly filed reexamination, if the earlier reexamination is still ongoing, the same examiner will be
assigned the new reexamination.
Copending reissue and reexamination proceeding:
(1) When a reissue application is pending for a
patent, and a reexamination request is filed for the
same patent, the reexamination request is generally
assigned to an examiner who did not examine the
original patent application even though the examiner

2600-42

OPTIONAL INTER PARTES REEXAMINATION

who examined the patent application is handling the
reissue application. If the reexamination request is
granted and the reissue and reexamination proceedings are merged (see MPEP § 2686.03), the merged
proceeding will be handled by *>a< TC examiner
other than the examiner who examined the original
patent application. *>In that instance<, the reissue
application would be transferred (reassigned) from the
originally assigned examiner.
(2) When a reexamination proceeding is pending
for a patent, and a reissue application is filed for the
same patent:
(a) Where reexamination has already been
ordered (granted) in the reexamination proceeding,
the Office of Patent Legal Administration (OPLA)
should be notified, as promptly as possible after the
reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of
the reexamination file, the reissue application, and the
patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA
(see MPEP § 2686.03). If the reissue and reexamination proceedings are merged by OPLA, the reissue
will generally be assigned in the TC having the reissue (upon return of the files from OPLA) to the TC
examiner who would ordinarily handle the reissue
application. However, if that examiner was involved
in any part of the examination of the patent for which
reexamination is requested (e.g., by preparing/signing
an action), or was so involved in the examination of
the parent application of the patent, a different TC
examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the
decision will provide guidance as to assignment of the
reissue proceeding depending on the individual fact
situation.
(b) If reexamination has not yet been ordered
(granted) in the reexamination proceeding, **>a TC
Quality Assurance Specialist (QAS)< will ensure that
the reissue application is not assigned nor acted on,
and the decision on the reexamination request will be
made. If reexamination is denied, the reexamination
proceeding will be concluded pursuant to MPEP
§ 2694, and the reissue application assigned in accordance with MPEP § 1440. If reexamination is granted,
a first Office action will not accompany the order
granting reexamination. The signed order should be
(after review by the CRU *>SPE<) promptly for-

2636

warded to the OPLA for mailing. At the same time,
the OPLA should be notified that the proceedings are
ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent
file are paper files, they should be hand delivered to
OPLA at the time of the e-mail notification to OPLA
(see MPEP § 2686.03). If the reissue and reexamination proceedings are merged by OPLA, the reissue
application will generally be assigned in the TC having the reissue (upon return of the files from OPLA)
to the TC examiner who ordinarily handle the reissue
application. However, if that examiner was involved
in any part of the examination of the patent for which
reexamination is requested (e.g., by preparing/signing
the action), or was so involved in examination of the
parent application of the patent, a different TC examiner will be assigned. If the reissue and reexamination
proceedings are not merged by OPLA, the decision
will provide guidance as to assignment of the reissue
proceeding depending on the individual fact situation.
(B)

Consequences of Inadvertent Assignment to
an “Original Examiner”

Should a reexamination be inadvertently assigned
to an “original examiner” (in a situation where the TC
or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third
party requester who objects must promptly file a
paper alerting the Office of this fact. Any request
challenging the assignment of an examiner to the case
must be made within two months of the first Office
action or other Office communication indicating the
examiner assignment, or reassignment will not be
considered. Reassignment of the reexamination to a
different examiner will be addressed on a case-bycase basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any
Office decision(s) or action(s) and “restarting” the
reexamination.
A situation may arise where a party timely (i.e.,
within the two months noted above) files a paper
alerting the Office to the assignment of a reexamination to the “original examiner,” but that paper does not
have a right of entry under the rules (e.g., where
an order granting reexamination was issued by the
“original examiner” but a first action on the merits did
not accompany the order, the patent owner timely files
a paper alerting the Office of the fact that the “original

2600-43

Rev. 7, July 2008

2637

MANUAL OF PATENT EXAMINING PROCEDURE

examiner” has been assigned the reexamination proceeding. Pursuant to 37 CFR 1.939(b), that paper does
not have a right of entry since a first Office action on
the merits has not yet been issued.) In such situations,
the Office may waive the rules to the extent that the
paper directed to the examiner assignment will be
entered and considered.

which a transfer is desired. Any conflict which cannot
be resolved by the *>SPEs< will be resolved by the
CRU Director.
If the “new” art unit accepts assignment of the reexamination request, the “new” CRU *>SPE< assigns
the request to an examiner in that unit.

2638
II.

Time Reporting [R-7]

MECHANICS OF ASSIGNMENT

When a request for reexamination is received in the
Office, it will be processed by the CRU support staff.
After the case file has been reviewed in the CRU to
ensure it is ready for examination, the CRU support
staff will docket the case to the examiner assigned to
the reexamination proceeding by the *>CRU SPE<.

**>Reexamination fees are based on full cost
recovery, and it is essential that all time expended on
reexamination activities be reported accurately. Thus,
all USPTO personnel should report all time spent on
reexamination on their individual Time and Attendance Reports. Even activities such as supervision,
copying, typing, and docketing should be included.<

In the event the *>CRU SPE< believes that another
Art Unit should examine the case, see MPEP § 2637
for procedures for transferring the case.

2640

2637

Transfer Procedure [R-7]

Although the number of reexamination requests
which must be transferred should be very small, the
following procedures have been established for an
expeditious resolution of any such problems.
An inter partes reexamination request is normally
assigned to the Central Reexamination (CRU) art unit
which examines the technology (Chemical, Electrical,
Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. If the CRU
**>Supervisory Patent Examiner (SPE)< (to whose
art unit the reexamination has been assigned) believes
that the reexamination should be assigned to another
art unit, he or she must obtain the consent of the CRU
*>SPE< of the art unit to which a transfer is desired.
Pursuant to 35 U.S.C. 314(c), all inter partes reexamination proceedings must be conducted with special
dispatch within the Office. This applies to the transfer
of reexamination proceedings. Accordingly, the CRU
*>SPE< to whose art unit the reexamination has been
assigned should expeditiously make any request for
transfer of a reexamination proceeding to the CRU
*>SPE< of the art unit to which a transfer is desired
(the “new” art unit). Further, the CRU *>SPE< to
whose art unit the reexamination has been assigned
should hand-carry any paper patent file for the reexamination proceeding to the SPE of the art unit to

Rev. 7, July 2008

Decision on Request [R-7]

35 U.S.C. 312. Determination of issue by Director
(a) REEXAMINATION.— Not later than 3 months after the
filing of a request for inter partes reexamination under section
311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is
raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new
question of patentability is not precluded by the fact that a patent
or printed publication was previously cited by or to the Office or
considered by the Office.
(b) RECORD.— A record of the Director’s determination
under subsection (a) shall be placed in the official file of the
patent, and a copy shall be promptly given or mailed to the owner
of record of the patent and to the third-party requester.
(c) FINAL DECISION.— A determination by the Director
under subsection (a) shall be final and non-appealable. Upon a
determination that no substantial new question of patentability has
been raised, the Director may refund a portion of the inter partes
reexamination fee required under section 311.

37 CFR 1.923. Examiner’s determination on the request
for inter partes reexamination.
**>Within three months following the filing date of a request
for inter partes reexamination under § 1.915, the examiner will
consider the request and determine whether or not a substantial
new question of patentability affecting any claim of the patent is
raised by the request and the prior art citation. The examiner’s
determination will be based on the claims in effect at the time of
the determination, will become a part of the official file of the
patent, and will be mailed to the patent owner at the address as
provided for in § 1.33(c) and to the third party requester. If the
examiner determines that no substantial new question of patentability is present, the examiner shall refuse the request and shall
not order inter partes reexamination.<

2600-44

2641

MANUAL OF PATENT EXAMINING PROCEDURE

reexamination would be suspended until conclusion
of proceedings in the first reexamination. In such an
instance, merger of the second (or subsequent) reexamination with the first would unduly prolong the
conclusion of the pending reexamination and be
inconsistent with the requirement that the reexamination proceeding be conducted with special dispatch.
Where an ordered inter partes reexamination is
pending, and an inter partes reexamination request is
subsequently filed, the prohibition provision of 37
CFR 1.907(a) must be borne in mind. Once an order
for inter partes reexamination has been issued, neither
the third party requester of the inter partes reexamination, nor its privies, may file a subsequent request for
inter partes reexamination of the same patent until an
inter partes reexamination certificate has been issued,
unless expressly authorized by the Director of the
Office. Note that 37 CFR 1.907(a) tracks the statutory
provision of 35 U.S.C. 317(a). A petition for such
express authorization is a request for extraordinary
relief and will not be granted where there is a more
conventional avenue to accomplish the same purpose
and provide relief analogous to that requested. See
also Cantello v. Rasmussen, 220 USPQ 664 (Comm’r
Pat. 1982) for the principle that extraordinary relief
will not normally be considered if the rules provide an
avenue for obtaining the relief sought.
>For additional treatment of cases in which either
the first or subsequent request for examination, or
both, is/are an inter partes reexamination proceeding,
see MPEP § 2640 and § 2686.01.
For additional treatment of cases in which a first ex
parte reexamination is pending at the time a second or
subsequent request for ex parte reexamination is to be
decided, see MPEP § 2283.<

2641

Time for Deciding Request [R-7]

The determination of whether or not to reexamine
must be made (completed and mailed) not later than
three (3) months after the filing date of a request. See
35 U.S.C. 312(a) and 37 CFR 1.923. If the 3-month
period ends on a Saturday, Sunday or Federal holiday
within the District of Columbia, then the determination must be mailed by the preceding business day.
Generally, the Central Reexamination Unit (CRU)
forwards the inter partes reexamination case to the
examiner within two (2) weeks of the filing date of
the request.

Rev. 7, July 2008

(A) The examiner has one (1) week from his/her
receipt of the reexamination to prepare for an initial
consultation conference with a Reexamination Legal
Advisor (RLA).
After the consultation with the RLA, the examiner has two (2) weeks from the date of the consultation conference to prepare the decision on the request
and an Office action (if reexamination is granted), and
forwards the reexamination to the **>CRU Supervisory Patent Examiner (SPE)<.
The decision and the action will be reviewed by
the *>CRU SPE< and the reexamination file along
with the decision and action will be forwarded (hand
carried) to the RLA.
(B) At the very latest, the decision and action
prepared by the examiner must be hand carried by the
SPRE to the RLA within nine (9) weeks from the filing date of the request (unless otherwise authorized
by the CRU Director or a RLA).
(C) It should be noted that the first Office action
ordinarily accompanies an order for reexamination;
however, if the issuance of the first Office action
would delay the order to the extent that a critical
deadline will not be met, the order will be mailed and
the first action will follow in due course, as per the
guidance set forth in MPEP § 2660.

2642
I.

Criteria for Deciding Request [R-7]
SUBSTANTIAL NEW QUESTION OF PATENTABILITY

The presence or absence of “a substantial new
question of patentability” determines whether or not
reexamination is ordered. The meaning and scope of
the term “a substantial new question of patentability”
is not defined in the statute and must be developed to
some extent on a case-by-case basis, using the case
law to provide guidance as will be discussed in this
section.
If the prior art patents and printed publications raise
a substantial question of patentability of at least one
claim of the patent, then a substantial new question
of patentability is present, unless the same question
of patentability has already been decided by (A) a
final holding of invalidity, after all appeals, or (B) by
the Office in a previous examination or pending reexamination of the patent. A “previous examination” of
the patent is: (A) the original examination of the

2600-48