Inter Partes Reexamination

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In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.”  Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears.  One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference.  In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application.  See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009).   A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit.  In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim
Continue Reading “Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?

The U.S. District Court for the Southern District of Georgia in E-Z-GO v. Club Car, Inc. (Case No. 1:09-cv-119) has stayed the litigation of E-Z-GO’s patent pending the outcome of inter partes reexamination.  E-Z-GO asserts that two of Club Car’s currently marketed electric vehicles infringe U.S. Patent No. 7,332,881, entitled “AC Drive System for Electrically…

In recent posts, we have discussed the Northern District of California’s surprising stay of a patent infringement suit in view of an undecided reexamination request.  Likewise, our colleagues at the ITCblog have discussed the opposite extreme, the International Trade Commission (ITC).  The ITC seems to grant stays pending reexamination in only the most extreme of circumstances due to their statutorily mandated time to decision. 

In the Eastern District of Texas, stays although historically disfavored, are beginning to emerge in stipulated form. 
Continue Reading Forum Shopping in Anticipation of Concurrent Reexamination

Many district courts have complained that the length of inter partes reexamination proceedings is a significant deterrent to granting a stay of patent litigation. Consequently, district courts typically deny a stay request where there is a newly filed inter partes reexamination request that could result in an indefinite delay in court action prejudicial to a…

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)

Unlike in ex parte reexamination, a third party requester may participate at every stage of the proceedings. A third party requester (TPR) may once file written comments on any response by the patent owner to an Office action. 35 USC 314(b)(3). All proposed grounds of rejection raised by the TPR, and all TPR comments must be specifically addressed by the examiner. The TPR may appeal any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability to the Board of Patent Appeals and Interferences (BPAI) under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(1). The TPR may be a party to nay patent owner appeal of a rejection to the BPAI under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(2). A TPR cannot file an inter partes reexamination request: (1) while a first inter partes reexamination is ongoing -35 USC 317(a); (2) where a final decision has been entered against the TPR in a civil action, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); (3) where a final decision has been entered against the TPR in an inter partes reexamination that is favorable to the patent owner, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); and (4) for a any patent that issued from an original application filed in the U.S. before November 29, 1999-Section 4608 of P.L. 106-113. Estoppel attaches against any TPR in a later civil action if the TPR loses: as to reasserting grounds of invalidity against challenged patent claims-35 USC 315(c) or as to challenging facts established in the reexamination proceedings-Section 4607 of P.L. 106-113.
Continue Reading An Inter Partes Reexamination Primer (Part 1 of 2)

On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes reexamination of U. S. Patent No. 6,869,779 (“the ‘799 patent”).  Originally, Troll Busters named itself as both the sole real party in interest and the third party requester.  However, as the PTO became aware of Troll Buster’s website, http://www.troll-busters.com, questions arose as to whether the actual real party in interest was correctly identified as required by 35 U.S.C. § 311(b)(1) and 37 C.F.R. 1.915(b)(8). On their website, Troll Busters proclaims that “Troll Busters invalidates patents, not just any patents but patents being asserted by patent trolls, those ugly beasts who try to dominate the innovations of others….Troll Busters takes aim and fires in our own name.  The patent Troll will never know who or how many are behind the ‘hit’.”
Continue Reading IN RE TROLL BUSTERS BEWARE: FAILURE TO DISCLOSE REAL PARTY IN INTEREST WHEN FILING AN INTER PARTES REEXAMINATION

mcePaste” style=”overflow: hidden; left: -10000px; width: 1px; position: absolute; top: 0px; height: 1px;”>On April 14, 2009, USDJ David Folsom issued an order denying Defendant’s, Fanuc Ltd., et al, motion to stay litigation pending the outcome inter partes and ex partes reexamination of patents-in-suit: 3 inter partes, 1 ex parte. ROY-G-BIV Corp. v. FANUC Ltd. et…

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)