bloksAs a review for new readers, some IPR basics.

Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent.  Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents.  Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added.  There are two types of reexamination proceedings: ex parte and inter partes.  An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action.  The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse to expensive and lengthy infringement litigation.  H.R. Rep. No. 96-1307(I).

The benefits provided by an inter partes reexamination include:

  1. Patents and printed publications relied upon in the reexamination also presented to the Court will have been first considered by the USPTO, with its particular expertise;

  2. Many discovery problems relating to prior art patents and printed publications can be alleviated by the reexamination;

  3. In those cases resulting in effective final adverse determinations on claim patentability, the suit may be dismissed;

  4. The outcome of the reexamination may encourage a settlement without the further use of the court;

  5. The reexamination file history may be entered into the record at trial, thereby reducing the complexity and length of the litigation;

  6. Issues, defenses, and evidence will be more easily limited in pretrial conferences after a reexamination; and

  7. The cost will likely be reduced both for the parties and the court.

A purpose of the reexamination procedure is to eliminate trial of issues or to facilitate trial of issues.  The courts should not expend unnecessary judicial resources by attempting to resolve claims which may be amended, eliminated or lucidly narrowed by the reexamination process and the expertise of the USPTO.