Speed of Patent Reexamination Not So Special?
As most readers of this blog realize, patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy. Of course the ultimate determination of whether or not a stay is appropriate varies with the facts of each case, and attitudes toward such practices vary wildly across jurisdictions, and even across judges of the same court.
Last week’s determination in Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED, Norfolk) was typical in many respects. With discovery coming to a close, Markman proceedings complete, and trial scheduled in three months time, it seemed the timing alone was enough to deny the motion to stay. While the stay was denied, the court took the opportunity to call out the special dispatch accorded patent reexaminations at the USPTO as….well, not so special.
The court explained (here):
Although some district courts justify staying a patent case based on the federal statute requiring that PTO reexaminations be “conducted with special dispatch,” 35 U.S.C. § 305, this court affords minimal weight to such statutory provision as the undeniable reality is that even if the PTO promptly responds to all filings, the parties often request extensions and the reexamination process frequently takes several years to complete. Furthermore, even after the PTO issues a final agency action, the gravity of the stakes in patent disputes often leads to appeals to both the Board of Patent Appeals and Interferences (“BPAI”) and federal courts. See, e.g., In re American Academy of Science Tech Center, 367 F.3d 1359, 1362-63 (Fed. Cir. 2004) (affirming the BPAI’s claim construction ten years after the request for PTO reexamination was filed). Although the potential length of such process certainly does not bar entry of a stay, it is a consideration that this court takes seriously when exercising its broad discretion.
Ostensibly, the court excused the PTO’s delay, blaming the lack of special dispatch on time extensions.
Yet, extensions of time are not available to third parties, ever. For inter partes patent reexamination (as was the case here, 95/001,418) third party requests for an extension of time are precluded by statute. Likewise, in ex parte reexamination, there is no third party participation at all. Even for Patent Owners, time extensions are not a matter of right and require a showing of cause. A worst case scenario would only add 1-2 months of delay for extensions; negligible in view of the bigger pendency picture.
In this case a first action was issued within 9 weeks of the request for inter partes patent reexamination (August 2010). The Patent Owner responded in December, without extension; so far, so good on special dispatch.
Certainly patent reexamination, through appeal, takes a significant amount of time. But, that is not to say that the court must stay the case until the very end of the reexamination proceeding. Recently courts have lifted stays during the appeal stage if patentable subject matter stands confirmed/allowed. Still other courts find a final action (or ACP) to be instructive. Going forward, defendants may consider proposing more milestone based motions for stay. Especially since the above “special dispatch quote” will be cited ad nauseum in every plaintiff opposition brief.