Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel
The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”
By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).
As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan. Read the rest of this entry »
Estoppel Effect of USPTO Decision Attaches Only After All Appeals Exhausted
Estoppel, as it relates to inter partes patent reexamination (IPX) proceedings and the new inter partes review (IPR) of the AIA, has been a topic of discussion here over the past few weeks. As if on cue, the CAFC has chimed in with a bit of clarification on the topic of (IPX) estoppel as it relates to 35 USC § 315.
The USPTO has maintained the position that IPX estoppel (35 USC § 317) only attaches after all appeals are exhausted. That is to say, the USPTO will not honor an intermediate court result to for the purposes of vacating an ongoing IPX, or denying a new request, by operation of estoppel. Instead, the USPTO awaits a final appeal decision (or time for filing of such to pass). The Office has not had much opportunity to comment on the complimentary statute § 315 (c), which provides the estoppel effect of a USPTO decision on the district courts. This analysis was performed this past week by the CAFC. Read the rest of this entry »
Petition or Appeal?–Pursuit of SNQ Denial at the USPTO
When pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because 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).
Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.
But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds. Read the rest of this entry »
Stay of Parallel Litigation Denied Due to Lack of Estoppel?
When implementing a patent reexamination strategy, a threshold determination is whether or not to initiate ex parte or inter partes patent reexamination, or both. This decision is very straight forward for older patents (i.e., those patents that did not mature from an application filed on or after November 29, 1999). This is because applications filed prior to the 1999 date are not eligible for inter partes patent reexamination.
Yet, as the years progress, fewer and fewer patents are outside of the inter partes date provision. So, where both options are available, which is the better option?
Like most legal inquiries, the answer is “it depends.” For those seeking a stay of a parallel litigation, the answer will vary in accordance with the practice of the presiding judge. Read the rest of this entry »
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 »
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 »