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[PHInventor]

In my field of art, “Mr. A.” has filed suit against two competitors for patent infringement. 

The competitors' products are not patent-protected, and they use fairly obvious applications of known technology. They appeared on the market after Mr. A.'s filing date but before his market launch. 

Mr. A.’s product uses several non-obvious improvements over known technology.  The competition does not infringe his narrow claims.  However, Mr. A. was also allowed some very broad claims, which do cover the more obvious innovations used by the competitors.

It is my belief that Mr. A.’s broadest claims can easily be knocked down by referring to information made public several years prior to Mr. A’s original filing date, and which would make his broadest claims obvious.  Since this information was disclosed outside the area of patent law, however, the examiner would not have discovered it during patent searches.  Moreover, Mr. A. did not include this information in his IDS.

Mr. A.’s original filings, as well as a still-pending continuation in 2008, were performed by a mid-sized firm.  They do prosecution as well as litigation.

However, his infringement suits have all been filed using a different, much smaller firm. 

I obviously have no idea whether Mr. A is genuinely ignorant of the weak nature of his broad claims, and of the existence of prior public information that could potentially invalidate them.

Questions:

1.  If you were a competitor in this area of art, albeit with a different technology not covered even by Mr. A’s broadest claims, would you just stand by and watch?  Or would you send information about the prior art to someone (one of the defendants?  the USPTO?), hoping to cut down an overly-litigious competitor before he can turn his attention to you next (on whatever pretext)? 

2.  When facing a hostile and litigiously-prone competitor, how strong a counterattack is a claim of patent invalidation based upon prior public information?  In other words, would such a logically sound argument be a strong enough defense against the financial onslaught of being tied up in court by a litigious competitor? 

[2ndcareer]

(1) Whether you should stand by and watch, depends on the potential cost and gain, and it is a business decision.  But there are always some "freebies" you can do.  If you know of some good prior art, you don't need to send it to anyone.  You can just publish your own blog commenting on the Prior Art. 

You might not want to spend too much time commenting on the competitor's patents.  There is also a risk associated with commenting on competitor's patents.  That being, IF, just IF, ultimately, his patents are upheld as valid, and your company is found infringing on his patents, HE might use your comments on his Patents as evidence that you had prior knowledge of his patent rights, and thus go for "Willful Infringement" treble damages.

(2) it is pretty common now that Defendants will 1st try to invalidate a patent using "reexamination".  Litigations will be temporarily held up if there is a pending Reexamination on the patent in question.  This cuts down on the cost, because good previously unconsidered prior art will invalidate the patents (or at least many of the claims), and force the Plaintiff to settle.

[NJ Patent1]

PH: 
1.  If you were a competitor in this area of art, albeit with a different technology not covered even by Mr. A’s broadest claims, would you just stand by and watch?  Or would you send information about the prior art to someone (one of the defendants?  the USPTO?), hoping to cut down an overly-litigious competitor before he can turn his attention to you next (on whatever pretext)? 

If you are SURE your product does not infringe literally (regardless of “technology”) or by equivalents, I’d let sleeping dogs lie.  Clients for whom I write an invalidity opinion almost always ask “does this mean I won’t get sued?”  The answer is always no, the best I can do is say we have a good invalidity argument and you likely won’t get hit with treble damages if you are sued and we lose.
 
2.  When facing a hostile and litigiously-prone competitor, how strong a counterattack is a claim of patent invalidation based upon prior public information?  In other words, would such a logically sound argument be a strong enough defense against the financial onslaught of being tied up in court by a litigious competitor? 

A’s issued patent is presumptively valid.  Invalidity must be proved at the DC by “clear and convincing” evidence, which sits somewhere between “preponderance of the evidence” (the lower burden A will have meet to prove your client infringes) and “beyond a reasonable doubt” from criminal law.
 
To get a reexam, mentioned by 2ndcareer, rolling, all you need today is a “substantial new question of patentability”; and you don’t have to wait for litigation.  In reexam the Office will construe claims as broadly as is reasonable. Not so in litigation were claim construction in the DC is more constrained, perhaps giving you an advantage in reexam.
 
There are downsides to reexam if the broadest claims that concern you are confirmed at the PTO in the face of the new evidence you present.  Defendant has a “heightened burden” in the DC proving invalidity over art already considered by the Office.  But if you can live with “loosing” in a reexam, it would almost certainly be less expensive than mounting an invalidity defense in litigation.

[PHInventor]

Thanks to you both for the info about reexamination. Very helpful. 

Are the reexam writeups on public PAIR detailed enough to disclose any new information that is presented as prior art?

[NJ Patent1]

PHI:  Sorry, I’m not exactly sure of what you are asking.  Once a reexam request (or any document) hits public PAIR, it is “published”.  But a well-written reexam request would present the new prior art document(s) with an (attorney/agent) argument as to why the new art raises a substantial new question of patentability.  I doubt that “attorney argument” per se would have much value as "prior art".  Comments filed by the patent owner could create estoppel with regards to that particular patent (or a CON or DIV of it).   

[bleedingpen]

Problem with reexam is those damn patent owner interviews where the patent owner talks the examiner into some bs claim amendment and then you have a gold plated patent being reexamined.  Though reexam is almost always significantly cheaper that litigation. 

Your fact scenario is more complicated though since there is a pending continuation (a strategy that every patent owner should employ).  Fire off that prior art if you must, but I would be concerned of Examiner rubber stamping.