Working Patent Reexamination Developments Into the Appeal Record

Previously, I discussed how an appellant sought relief at the CAFC from an earlier Markman Order under Fed. R. Civ. P. 60(b). The Appellant argued on appeal that a recently concluded ex parte patent reexamination of the patent at issue constituted new evidence requiring relief from the earlier decision. The appellant theorized that the USPTO’s analysis as to claim scope should carry significant weight, and were contrary to the court’s earlier Markman and SJ findings. While the CAFC accepted the argument under Rule 60, they ultimately found for the Appellee.

Recently, yet another appeal rule was leveraged to inform the CAFC of USPTO findings in patent reexamination.

In General Electric Co. v. ITC, one issue reviewed by the court was the Commission’s determination of no domestic industry in regard to a particular patent based on its claim constructions. The Federal Circuit reversed the Commission’s construction and ruled in favor of General Electric’s claim construction. The Court noted in a footnote that the other party “submitted a letter in accordance with Fed. R. App. P. 28(j), arguing that General Electric stated a position before the PTO during the ongoing reexamination of the ‘985 patent that contradicts its arguments here. General Electric responds that its argument distinguishing a certain reference does not conflict with its position here. On the information before us, the reexamination arguments do not affect our conclusion.”

Here too, the court was unmoved by the inconsistent reexamination evidence. Yet, the footnote suggests yet another avenue that parties may explore at the appeal stage, namely, filing a letter or submission under Fed. R. App. P. 28(j) as a “citation of supplemental authorities.”