By Scott A. McKeown
| November 5, 2009
The inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) is a familiar one to many patent practitioners.  This provision is often cited as the primary justification for disfavoring inter partes reexamination over other post grant patent strategies. Yet, as ITC actions become increasingly utilized for their expediency in reaching a conclusion, further consideration should be given to the applicability of this estoppel to Federally created Agencies.

Specifically, § 315(c) provides:

“[a] third party requester…is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”

Importantly, this estoppel provision is explicitly limited to “civil action[s] arising in whole or in part under section 1338 of title 28.”  Section 1338 of title 28, in turn, merely provides that “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.”  In other words, 28 U.S.C. § 1338 gives original jurisdiction over patent cases to the Article III district courts, but says nothing about Article I courts, such as the ITC.  Accordingly, the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) only applies to civil actions in the district courts, and does not apply to ITC investigations.

Since the inter partes reexamination estoppel provision does not apply to ITC investigations, respondents are free to raise the same invalidity arguments in both fora -- in effect, to get two bites at the apple.

This means that respondents in Section 337 investigations at the ITC should consider the potential benefits to be gained by initiating a concurrent inter partes reexamination proceeding at the USPTO.  While the odds of obtaining a stay of ITC proceedings in favor of a concurrently filed reexamination proceeding is for the most part, unlikely, the ability of the reexamination requester to actively participate in the reexamination may lead to the creation of intervening rights, prosecution history estoppel, and non-infringement positions relative to the patent at issue.  In this way, the requesting party may offer to “back out” of participation in the reexamination as part of an overall settlement strategy; thereby leading the Patentee in a much favorable position to recover the patent.
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