Early Stage Reexamination Result Lacks Probative Value for Summary Judgment PurposesAs discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.As explained last week in Volterra Semiconductor Corporation v. Primarion, Inc., et. al. (NDCA):With respect to the PTO Initial Office Actions and reexamination orders, it is well established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1998), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. . . . Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question . . . Therefore, Plaintiff’s objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity.For the above reasons, parallel patent reexamination filings are almost never concurrently filed for the purpose of convincing a fact finder that a patent should be found invalid. Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, the benefits of parallel patent reexamination evidence are explained as: aiding an inequitable conduct defense, impacting claim construction, rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive relief.In the above case, although inequitable conduct was denied on summary judgement for intent reasons, the materiality determination of the reexamination with respect to common references was considered by the court.This case was brought to my attention by the great Docket Navigator.
As discussed last month, evidence of a concurrent reexamination proceeding is typically excluded in district courts as lacking relevance under FRE 402 and/or as being more prejudicial than probative under FRE 403, when offered for purposes of demonstrating invalidity.
As explained last week in Volterra Semiconductor Corporation v. Primarion, Inc., et. al. (NDCA):
With respect to the PTO Initial Office Actions and reexamination orders, it is well established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1998), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. . . . Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question . . . Therefore, Plaintiff’s objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity.
For the above reasons, parallel patent reexamination filings are almost never concurrently filed for the purpose of convincing a fact finder that a patent should be found invalid. Instead, the benefits of parallel patent reexamination have been discussed at great length here as potentially impacting other aspects of litigation, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial?” (Parts I, II, III, and IV). In past posts, the benefits of parallel patent reexamination evidence are explained as: aiding an inequitable conduct defense, impacting claim construction, rebutting allegations of willful infringement, obtaining patent owner admissions to support a non-infringement defense, obtaining an intervening rights defense, providing grounds to stay a district court proceeding, and supporting/opposing injunctive relief.
In the above case, although inequitable conduct was denied on summary judgement for intent reasons, the materiality determination of the reexamination with respect to common references was considered by the court.