Estoppel

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In a prior blog entry, we discussed why it is important to conduct a thorough prior art search prior to filing a request for inter partes reexamination.  In short, the statutory language of 35 U.S.C. § 315(c) is intended to limit the third-party requester to a single bite at the invalidity apple.  Any prior art patents and printed publications discovered after the request for reexamination is filed may be excluded as a basis for invalidity in litigation if that prior art was publicly accessible when the request for inter partes reexamination was filed. What if a party is contemplating whether to suggest an interference with a patent or to request inter partes reexamination of the patent?  This may be the case, for example,
Continue Reading To Search or Not to Search (for prior art) When Contemplating Whether to Provoke an Interference

Part 1 of this series focused on the importance of a good prior art search prior to filing a request for inter partes reexamination.  Part 2 examines the exceptions to the estoppel provisions of § 315(c).  Specifically, this blog entry identifies situations in which a party might still be able to contest in litigation the validity of a patent that was the target of an unsuccessful request for inter partes reexamination.
Continue Reading Is The Estoppel Effect of Inter Partes Reexamination a Valid Deterrent to Filing? (PART 2 OF 2)

The estoppel consequences of inter partes reexamination are set forth in 35 U.S.C. §§ 315(c) and 317(b) as well as the uncodified provision of § 4607 of P.L. 106-113.  This blog entry will focus on § 315(c).  A third party is estopped from asserting in litigation the “invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” 35 U.S.C. § 315(c).  A few basic considerations can help an accused infringer minimize, if not eliminate, the negative effects of estoppel and still reap the benefits of inter partes reexamination.
Continue Reading IS THE ESTOPPEL EFFECT OF INTER PARTES REEXAMINATION A VALID DETERRENT TO FILING? (PART 1 OF 2)

The inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) is a familiar one to many patent practitioners.  This provision is often cited as the primary justification for disfavoring inter partes reexamination over other post grant patent strategies. Yet, as ITC actions become increasingly utilized for their expediency in reaching a conclusion, further consideration should be given to the applicability of this estoppel to Federally created Agencies.Continue Reading Inter Partes Reexamination & The International Trade Commission (ITC)