Greg Gardella

Patent Reexamination: Effective Strategy for Litigating Infringement Claims

Best Practices for Pursuing and Defending Parallel Proceedings

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Interplay Between Reexam and Litigation

• When to File Reexam?• Race to Judgment• Admissions• Collateral Estoppel

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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

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• 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

When to File Reexam: Beginning of Lawsuit

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• 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

When to File Reexam: Later in the Lawsuit

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• 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

When to File Reexam: After Lawsuit; Multiple, Staggered Requests

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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. Microsoft517 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

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“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)

Horse Race?

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In re TranslogicDATE LITIGATION REEXAM

March 1999 Patentee sues

June 1999 – Sept. 2002

Accused infringer files multiple reexam requests

Oct. 2003 Jury upholds patent validity

March 2004 PTO rejects claims

May 2005 Jury finds $86.5 million in damages

July 2005 BPAI affirms rejections

December 2005 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

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“Admission” by Patent Owner

Examiner may rely on admissions

Non-Final Holding of Invalidity or Validity

“Not controlling” in reexam

“Fact” determined in reexamination

Requester may be estopped from challenging fact in

litigation

Actions During Proceedings

Litigation Inter Partes Reexamination

Interplay Among Proceedings – A Lot Can Happen

Non-final rejectionPersuasive authority for

invalidity

Ongoing prosecution history: Patentee argues distinction over prior art

May impact claim interpretation or provide

basis for non-infringement position

Claim amendmentsMay limit damages or create

intervening rights

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Final Holdings

Litigation Inter Partes Reexamination

Interplay Among Proceedings – A Lot Can Happen

InvalidReexam is vacated

(as moot)

“Valid”Reexam is vacated if the requester was a litigant

Requester estopped from asserting invalidity in litigation

based on reexam prior art

Case dismissed

Final decision holding patent:

Final decision holding patent:

Invalid

“Valid”

A decision is “final” only after all appeals.

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Interplay Between Reexam and Litigation

• When to File Reexam• Race to Judgment• Admissions• Collateral Estoppel

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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

Greg Gardella

Patent Reexamination: Effective Strategy for Litigating Infringement Claims

Best Practices for Pursuing and Defending Parallel Proceedings