The Lazarus Patent

Submitted by patentadmin on Thu, 03/25/2010 - 16:43

Is a court’s summary judgment decision that your patent is invalid the end of the line? Not necessarily, at least not if you play your cards right. You may be able to convince the court to vacate its decision! (Gracenote, Inc. v. MusicMatch, Inc.)

Gracenote sued MusicMatch, only to have the judge grant a motion for a summary judgment that one of the patents-in-suit was invalid. Thereafter, the parties reached a settlement, pursuant to which MusicMatch agreed not to oppose a motion by Gracenote to vacate the summary judgment decision. Gracenote then moved to vacate, arguing that the Court had erred in finding the patent invalid and stating that it intended to seek re-examination of the subject patent, in the course of which it would submit the Court’s decision, and the prior art references on which it was based, to the Patent Office. “Gracenote respectfully requests that the Court vacate the [decision] and allow the PTO to determine the relevance of [the cited prior art] to the claims of the … patent …” The Court granted this motion, vacating its decision.

In the six (6) years since this motion was granted, no request for re-examination of the subject patent has been filed.

THE LESSON TO BE LEARNED: We cannot condone this sort of practice; hopefully, the Court will take some remedial action.

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