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Concluded Ex Parte Reexamination Results Ignored by District Court?
Estoppel of 35 USC § 317(b) Applies Only to Inter Partes Patent Reexamination
One of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to “gold plate” a patent that is later asserted against the requester in district court, especially with respect to the same or similar art. This notion was tested recently in Crestron Electronics Inc. v. RGB Systems Inc., CV 09-8402 (CDCA).
Crestron’s U.S. Design Patent D569,863 is asserted against RGB in the California District Court. RGB had earlier sought ex parte reexamination of the same patent based upon the same prior art now applied in the district court proceeding. Not surprisingly, Crestron noted that the reexamination attempt based on the same art now before the district court had failed to invalidate the patent. In other words, without any presumption of validity, and the ability to invalidate the patent by a mere preponderance of the evidence, RGB failed. Thus, Crestron argued that the reexamination results should preclude an invalidity defense on the same art. The court decided that not only can RGB argue the same invalidity positions over again, but that the court need not even show deference to the reexamination results. Read the rest of this entry »
