Patents Post Grant Blog

Can an Ongoing Patent Reexamination be Stopped?

With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”

In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.

In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel. Read the rest of this entry »

Back on September 25, 2005, Judge Farnan of the United States District Court for the District of Delaware stayed the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc. (Civil Action 03-185) relating to U.S. Patent 6,523,680. The stay was entered in favor of inter partes reexamination 95/000,072.

Yesterday, the rejection of issued claims 1-14 was reversed at the BPAI (decision here). The refusal to adopt a rejection of claim 6 and 13 was also affirmed. Thus, the Third Party, Rexnord Industries, may find itself on the wrong side of the estoppel equation of 35 USC 315 (c) very shortly.

More importantly, will the court recognize the significant delay to date, and the appeal reversal as justification enough to lift the stay? Read the rest of this entry »

–Part I–

Since the storied emergence of the patent troll (non-practicing entity (NPE) for those preferring the multisyllabic, PC terminology), it is not uncommon for an entire industry to find themselves on the same side of the defendant fence of a patent infringement suit. Where the targeted industry includes a mixture of small to large competitors, it is especially common for smaller targets to form temporary litigation alliances amongst themselves, and with their larger, deep pocket competitors.

These alliances are memorialized as written contracts or “joint defense agreements” (JDA). The purpose of such agreements is to provide for a structured exchange of information for mutual defense benefit, and protect this communication from discovery requests under the auspices of the joint-defense privilege.

When such agreements are in place, and inter partes reexamination is sought as a concurrent litigation strategy, a common concern is the applicability of the estoppel provision of 35 USC § 315(c) to the co-defendants as participants of the joint defense.  As explained next, it is clear that the USPTO Read the rest of this entry »

Inter partes reexamination, has created new opportunities for the public to challenge the patentability of some or all claims of issued patents filed on or after November 29, 1999 and to actively participate at each stage in the reexamination proceedings.  Indeed, as noted yesterday, inter partes filings, especially those relating to copending district court litigation,  have surged over the past several years.  Yet, this new proceeding has become a lightning rod of criticism for how it is managed in the USPTO.  Whether by academic rant, or judicial admonishment, inter partes reexamination is largely ridiculed as ineffective and open-ended in time, taking many times on the order of 7 years to conclude.  Yet, the delay in concluding an inter partes reexamination is impacted by many factors, many of which are outside of the control of the USPTO. 

Read the rest of this entry »

In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination.  In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple.  Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed.

What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent?  This may be the case, for example, Read the rest of this entry »

Part 1 of this series focused on the importance of a good prior art search prior to filing a request for inter partes reexamination.  Part 2 examines the exceptions to the estoppel provisions of § 315(c).  Specifically, this blog entry identifies situations in which a party might still be able to contest in litigation the validity of a patent that was the target of an unsuccessful request for inter partes reexamination. Read the rest of this entry »

The estoppel consequences of inter partes reexamination are set forth in 35 U.S.C. §§ 315(c) and 317(b) as well as the uncodified provision of § 4607 of P.L. 106-113.  This blog entry will focus on § 315(c).  A third party is estopped from asserting in litigation 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.” 35 U.S.C. § 315(c).  A few basic considerations can help an accused infringer minimize, if not eliminate, the negative effects of estoppel and still reap the benefits of inter partes reexamination.

Read the rest of this entry »

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.

Read the rest of this entry »