The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation
ass=”alignleft size-full wp-image-1179″ title=”sling” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/sling.jpg” alt=”sling” width=”217″ height=”249″ />As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis. For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims. However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic.
In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed.
For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.
Continue Reading Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?
Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial. In our prior posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I, II and III)”, we discussed using pending reexamination proceedings to support invalidity contentions, prove inequitable conduct, and rebut allegations of willful infringement. Accused infringers have also attempted to use evidence of parallel reexamination proceedings to support and oppose motions for preliminary injunction.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part IV of IV)
As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial. In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct. Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV)
–Concurrent Litigation a Driving Force– The USPTO has released their year end statistics for ex parte and inter partes patent reexamination. The ex parte statistics may be found here, the inter partes here. Ex parte numbers are down slightly, it is not clear whether this modest decrease is a function of the
Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial. In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions. Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part II of IV)
Several courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be admissible at trial. Parties in these cases have attempted to use the existence of pending reexamination proceedings to prove or disprove invalidity, inequitable conduct, and willful infringement. Opponents generally argue that evidence of parallel reexamination proceedings is irrelevant, unfairly prejudicial, and/or contrary to the statutory presumption of validity under 35 U.S.C. § 282.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part I of IV)
i4i filed suit against Microsoft back in March of 2007 in Texas for infringing U.S. Patent 5,787,449, relating to certain XML data structures. Faced with an injunction at the conclusion of trial in August of 2009, Microsoft was granted an emergency
On December 15, 2009 the USPTO issued a ‘Notice of Intent to Issue an Ex Parte Reexamination Certificate’ confirming the patentability of Merck’s billion dollar Singulair patent, U.S. 5,565,473. This development effectively concludes the reexamination of the Singulair patent. In initiating the reexamination, the USPTO issued a single nonstatutory obviousness-type double patenting reexamination rejection. Double patenting rejections relate to the ability of a Patent Holder to obtain multiple patents on obvious variations of a single invention. This rejection, if maintained by the Office would not have invalidated the patent, but instead, could have potentially shortened the term of the Singulair patent. However, the rejection was withdrawn by the USPTO.
The reexamination was initiated by a third party, Article One. Article One claimed to have uncovered
Continue Reading Singulair Reexamination Advances to Favorable Conclusion
The face of patent litigation in the U.S. has evolved greatly in the last 5 years with respect to patent reexamination. For patent litigators, throughout the U.S. and especially the Northern District of Illinois, the emergence of this now seemingly reliable strategic option is an important case management consideration. Indeed, if not adequately considered in