As pointed out in our earlier post on the issue, Joint Defense Agreements alone, do not result in privity for inter partes patent reexamination purposes; at least according to the USPTO.
Absent evidence of control and contribution with respect to an inter partes reexamination request, the USPTO has taken the position that cooperation for litigation purposes via JDA does not equate to privity for reexamination purposes pursuant to 37 C.F.R. §1.915(b)(7-8). Yet, in arriving at such a determination, the USPTO cautions that this conclusion is largely based on their administrative mandate, which does not provide for investigative resources and discovery power in this regard. As such, perhaps of greater concern to co-defendants is whether or not a court would find privity once a an inter partes reexamination concludes and estoppel attaches to the Requester.
Of course, due to the longevity of inter partes reexamination proceedings to date, the privity issue has yet to play out in a district court. Still, should a plaintiff recover a valid claim from an inter partes reexamination co-defendants will almost certainly 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 »
–Concurrent Litigation a Driving Force–
The USPTO has released their year end statistics for ex parte and inter partes patent reexamination. The ex parte statistics may be found here, the inter partes here. Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the overall 2009 economy, or a shift toward inter partes proceedings. Perhaps tellingly, the inter partes numbers continue to increase at a strong pace year over year.
The statistics indicate that a whopping 68% of inter partes reexaminations are known to be in litigation (32% for ex parte). With the continued influx of inter partes reexaminations to the Office, one has to wonder how the USPTO will keep up with the demand. Indeed, the Office is increasingly criticized with respect to the growing delays associated with inter partes reexamination.
Tomorrow we will explore how the behavior of inter partes requestors virtually ensures PTO inefficiency, and how such behavior may be discouraged to streamline the proceeding….stay tuned.
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