Patent Reexamination: Effective Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings

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Patent Reexamination Effective Strategy for
Litigating Infringement ClaimsBest Practices for
Pursuing and Defending Parallel Proceedings
Greg Gardella

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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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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

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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. 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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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. 105CV1447, 2006 WL
1472462, at 6 (E.D. Va. May 22, 2006)
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In re Translogic
DATE 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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Interplay Among Proceedings A Lot Can Happen
Actions During Proceedings
Litigation
Inter Partes Reexamination
Admission by Patent Owner
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
Non-final rejection
Persuasive authority for invalidity
Claim amendments
May limit damages or create intervening rights
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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
Reexam is vacated (as moot)
Invalid
Reexam is vacated if the requester was a litigant
Valid
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

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Estoppel In Ex Parte Reexam Via Court Order

• Some orders staying litigation are expressly
  conditioned on an estoppel provision
• Stay 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, 205CV186 (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 ClaimsBest Practices for
Pursuing and Defending Parallel Proceedings
Greg Gardella