slingass=”alignleft size-full wp-image-1179″ title=”sling” src=”” alt=”sling” width=”217″ height=”249″ />As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis.  For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims.  However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic. 

In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed. 

For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.  In the order granting reexamination, the Office correctly pointed out that this issue was not subject to reexamination, and, in compliance with the guidelines (form paragraph 22.03), utilized the language of MPEP 2258 (H), noting:

2258The statement above is recommended in MPEP 2258/2658, certainly the examiner did nothing wrong by following the guidleines.  However, from the perspective of the Patent Holder, the first sentence above would have adequately addressed the issue.  As can be appreciated, the second sentence of the above paragraph can easily be mischaracterized by third party requestors as implying that the examiner in fact reviewed the issue in granting the reexamination, and although incapable of commenting on the issue further in reexamination, indicated the further defect may be properly addressed via patent reissue. 

For example, while seeking stay of the litigation, the second sentence will be isolated and over-emphasized to the judge.  The statement will be twisted to imply a further defect, requiring further delay to address, thereby justifying the requested stay.  Alternatively, should the request for stay be denied, the defendant has at the very least planted a seed in the mind of the judge to be called upon later in attacking the enablement/written description of the claims. 

By inclusion of the second sentence (of form paragraph 22.03) above, the Office may be unwittingly encoraging third party gamesmanship.