Inter Partes Reexamination

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cooperationAs pointed out in our earlier post on the issue, Joint Defense Agreements alone, do not result in  privity for inter partes patent reexamination purposes; at least according to the USPTO. 

Absent evidence of control and contribution with respect to an inter partes reexamination request, the USPTO has taken the position that cooperation for litigation purposes via JDA does not equate to privity for reexamination purposes pursuant to 37 C.F.R. §1.915(b)(7-8). Yet, in arriving at such a determination, the USPTO cautions that this conclusion is largely based on their administrative mandate, which does not provide for investigative resources and discovery power in this regard. As such, perhaps of greater concern to co-defendants is whether or not a court would find privity once a an inter partes reexamination concludes and estoppel attaches to the Requester.

Of course, due to the longevity of inter partes reexamination proceedings to date, the privity issue has yet to play out in a district court. Still, should a plaintiff recover a valid claim from an inter partes reexamination co-defendants will almost certainly
Continue Reading Joint Defense Agreements & Inter Partes Reexamination (II)

6a00d83451ca1469e20120a7c6f685970b-800wiLast Friday, Chief Administrative Patent Judge of the USPTO’s Board of Patent Appeals and Interferences, Michael R. Fleming, presented an update on inter partes reexamination appeals (IPRA) at the ABA, IPL Section Conference.  At mid-year for 2010, pendency of BPAI decided appeals from date of Reexamination filing is 64.3 months. In 2010, 16 IPRA are…

smoking-gunass=”size-full wp-image-2005 alignleft” title=”smoking-gun” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/smoking-gun.jpg” alt=”smoking-gun” width=”135″ height=”143″ /> The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:  

In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended.  {Emphasis added.}

However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner?
Continue Reading Preventing Harassment in Patent Reexamination: MPEP § 2240’s Smoking Gun Requirement

 

untitled–Part I–

Since the storied emergence of the patent troll (non-practicing entity (NPE) for those preferring the multisyllabic, PC terminology), it is not uncommon for an entire industry to find themselves on the same side of the defendant fence of a patent infringement suit. Where the targeted industry includes a mixture of small to large competitors, it is especially common for smaller targets to form temporary litigation alliances amongst themselves, and with their larger, deep pocket competitors.

These alliances are memorialized as written contracts or “joint defense agreements” (JDA). The purpose of such agreements is to provide for a structured exchange of information for mutual defense benefit, and protect this communication from discovery requests under the auspices of the joint-defense privilege.

When such agreements are in place, and inter partes reexamination is sought as a concurrent litigation strategy, a common concern is the applicability of the estoppel provision of 35 USC § 315(c) to the co-defendants as participants of the joint defense.  As explained next, it is clear that the USPTO
Continue Reading Joint Defense Agreements & Inter Partes Patent Reexamination

doors-options

–Pick a Winner–

The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.

§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.  In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.  Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts
Continue Reading How will S.515 Impact Patent Litigation?

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With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding,
Continue Reading EPO Opposition Procedures, a Model for Post-Grant Review?

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Another week, another patent litigation stayed in a California court pending a concurrent USPTO  reexamination.  This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis…

–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…

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