Patent Reexamination: Effective Strategy
for Litigating Infringement Claims
Best Practices for Pursuing and Defending Parallel Proceedings
Greg Gardella
Interplay Between Reexam and Litigation
•
•
•
•
When to File Reexam?
Race to Judgment
Admissions
Collateral Estoppel
2
When to File Reexam:
Before the Lawsuit
• In conjunction with declaratory judgment
action?
• Provides a strong argument for the court to
grant a stay if litigation is later filed
• Less costly to contest patent via reexam
versus litigation
• Can cast later suit as retaliatory
• Caveat: might provoke a lawsuit
3
When to File Reexam:
Beginning of Lawsuit
• To maximize the chance of stay of litigation
– Status of discovery and trial schedule often a key
factor in decision to stay litigation
• To minimize the chance of preliminary
injunction/TRO
• The first OA or ACP is likely to issue before
trial
4
When to File Reexam:
Later in the Lawsuit
• Reexam request may be easier to prepare after
arguments are developed and prior art is searched
during litigation
• The grant of a reexam may influence the trier of fact
• A pending reexam may be influential in post-trial
proceedings, including permanent injunction motion
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When to File Reexam:
After Lawsuit; Multiple, Staggered Requests
• After the lawsuit
– May serve to terminate injunction, royalty obligation
• Multiple, staggered ex parte reexams
– Each new reexam request can attempt to address
alleged shortcomings of prior art considered in prior
reexam
– Tightening standards at the Central Reexamination Unit
– Merger of co-pending reexaminations
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Delay in Filing Reexam Requests May
Have Consequences
• Denial of relief from judgment on basis of disclaimer
by plaintiff during reexamination of patent filed by
defendant
• Defendant delayed in filing reexam request, waited
till after trial to file reexam request
– “Microsoft was not faultless in the delay [in filing
reexamination petition] and justice does not require
overturning a jury verdict at this late stage based on
statements made to the PTO.” Amado v. Microsoft
517 F.3d 1353 (Fed. Cir. 2008)
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Interplay Between Reexam and Litigation
•
•
•
•
When to File Reexam
Race to Judgment
Admissions
Collateral Estoppel
8
Horse Race?
“A party can choose to run horses in
both races, but the conclusion of one
race automatically ends the other; a
party cannot ride both horses to
conclusion.”
Sony v. Jon W. Dudas, No. 1:05CV1447, 2006 WL 1472462, at *6
(E.D. Va. May 22, 2006)
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In re Translogic
DATE
March 1999
LITIGATION
Patentee sues
June 1999 – Sept.
2002
Oct. 2003
Accused infringer files multiple
reexam requests
Jury upholds patent
validity
March 2004
May 2005
PTO rejects claims
Jury finds $86.5 million
in damages
July 2005
December 2005
REEXAM
BPAI affirms rejections
District Court enters
judgment
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In re Translogic: Federal Circuit
• Jury verdict nullified by reexamination:
– Fed. Cir. affirms rejection in reexamination,
holding patent claims as obvious (504 F.3d 1249)
– Same day, the Fed. Cir. “vacates the district
court's decision and remands this case to the
district court for dismissal.” (250 Fed. Appx. 988)
• What if reexam decision occur after? May
work to overturn permanent injunction. See,
e.g., FRCP 60(b)(5)
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Interplay Between Reexam and Litigation
•
•
•
•
When to File Reexam
Race to Judgment
Admissions
Collateral Estoppel
12
Interplay Among Proceedings –
A Lot Can Happen
Actions During Proceedings
Litigation
“Admission” by Patent
Owner
Inter Partes Reexamination
Examiner may rely on
admissions
May impact claim
interpretation or provide
basis for non-infringement
position
Ongoing prosecution
history: Patentee argues
distinction over prior art
Requester may be estopped
from challenging fact in
litigation
“Fact” determined in
reexamination
Non-Final Holding of
Invalidity or Validity
“Not controlling” in
reexam
Persuasive authority for
invalidity
Non-final rejection
May limit damages or create
intervening rights
Claim amendments
13
Interplay Among Proceedings –
A Lot Can Happen
Final Holdings
A decision is “final” only after all appeals.
Litigation
Inter Partes Reexamination
Final decision holding patent:
Invalid
Reexam is vacated
(as moot)
“Valid”
Reexam is vacated if the
requester was a litigant
Final decision holding patent:
Case dismissed
Invalid
Requester estopped from
asserting invalidity in litigation
based on reexam prior art
“Valid”
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Interplay Between Reexam and Litigation
•
•
•
•
When to File Reexam
Race to Judgment
Admissions
Collateral Estoppel
15
Estoppel In Ex Parte Reexam:
Via Court Order
• Some orders staying litigation are expressly
conditioned on an estoppel provision:
– “[S]tay would be granted only on the condition
that each Defendant agree not to challenge the
‘961 patent based on any prior art printed
publications that were considered during the
reexamination process.” Antor Media Corp. v. Nokia,
2:05CV186 (E.D. Tex., Oct. 23, 2006) (J. Folsom)
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“Practical” Collateral Estoppel
• When patent survives reexamination the trier
of fact is likely to indulge a strong
presumption that the patent is in fact valid
• This bias can apply even when defenses could
not have been raised during reexamination
– Offers for sale
– Prior invention
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Patent Reexamination: Effective Strategy
for Litigating Infringement Claims
Best Practices for Pursuing and Defending Parallel Proceedings
Greg Gardella