Admissibility in Litigation?
Several courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be admissible at trial. Parties in these cases have attempted to use the existence of pending reexamination proceedings to prove or disprove invalidity, inequitable conduct, and willful infringement. Opponents generally argue that evidence of parallel reexamination proceedings is irrelevant, unfairly prejudicial, and/or contrary to the statutory presumption of validity under 35 U.S.C. § 282.
Presented with both points of view, the rulings of courts vary, and whether this evidence is allowed tends to depend on the circumstances of the case. Many courts quickly reject Read the rest of this entry »
The U.S. District Court for the Southern District of Georgia in E-Z-GO v. Club Car, Inc. (Case No. 1:09-cv-119) has stayed the litigation of E-Z-GO’s patent pending the outcome of inter partes reexamination. E-Z-GO asserts that two of Club Car’s currently marketed electric vehicles infringe U.S. Patent No. 7,332,881, entitled “AC Drive System for Electrically Operated Vehicle.”
The court granted Club Car’s motion to stay the litigation pending the outcome of reexamination despite the fact that the PTO has not yet granted Club Car’s request for inter partes reexamination of the ‘881 patent. In granting the stay, the court noted that the PTO grants 95% of all requests for inter partes reexamination, and that the stay could be lifted if the PTO declines to grant Club Car’s request for inter partes reexamination.
In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper. The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (BPAI) by filing a civil suit against the USPTO in federal district court. Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit. This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.
On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that 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.
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