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 be subject to a privity attacks in an attempt to enforce the estoppel provision of 35 USC § 315(c).
For example, consider the case of a single defendant of a JDA that requests an inter partes reexamination, then settles with the Patent Holder early in the reexamination process. The Requester, as a term of the settlement, agrees not to participate any further in the inter partes reexamination process. In such a case, the Patent Holder may have an easier time recovering their patent from inter partes reexamination due to the lack of active opposition. Once a litigated claim of the patent is recovered, the Patent Holder may seek to enforce the estoppel provision of 35 USC § 315(c) against the remaining defendants. Such would effectively remove the reexamination art and any art that “could have been raised” in the reexamination from the district court proceedings.
Here, the court is likely to look much closer at the privity situation than the USPTO. Likewise, as the settling Requester is certainly a competitor of the remaining defendants, there may be motivation on behalf of the Requester to cooperate with the plaintiff in their fact finding.
In such situations, co-defendants that have joined in motions with the settling Requester to stay the litigation, have submitted invalidity pleadings that look very similar to claim charts of the request for reexamination, and that have coordinated and discussed reexamination issues with the settling Requester may find themselves on the wrong side of a district court privity determination.