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hammerUnlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.

A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed.
Continue Reading Shielding an Expert Declarant in Patent Reexamination from Deposition in Concurrent Litigation?

EDVA District Court Judge Payne denied the accused infringers’ motion to stay a patent infringement suit pending the outcome  of reexamination of the patents-in-suit in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-cv-620 (E.D.Va. March 31, 2010).   ePlus filed a patent infringement suit in May, 2009, against Lawson Software, Inc., and others

Ex parte reexamination appeals: For FY 09 ending September 30, 2009 the BPAI docketed 119 ex parte reexamination appeals; disposed of 96 and ended the fiscal year with 78 ex parte reexamination appeals in inventory. BPAI pendency was 5.9 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was