excerpts pdf 60-73 Consider The Likely Timing Of TheReexamination.
Reexaminations, both inter partes and ex parte can be slow.171 Some district court litigations will have completed in about the same time as it takes to conclude office-level practice in a reexamination.172 Unless a litigation is suspended it is unlikely that a concurrent reexamination will cancel the claims of an invalid patent in question before trial. There is a decent chance that a reexamination could invalidate claims by the time of an appeal from a district court judgment.173
It is prudent to evaluate when events in a concurrent reexamination are likely to happen, and how these events are likely to affect the litigation.174
The principal events in a reexamination that could affect concurrent litigation are the issuance of an order for
reexamination, the mailing of an office action on the merits, the Patent Owner’s response, the Final Action (ex parte) or Action Closing Prosecution and Right of Appeal Notice (inter partes), the appeals process and the issuance of a reexamination certificate. In general, the determination of a substantial new question of patentability and the order instituting the reexamination will happen within three months, and is likely to favor the Third Party Requester. That is, the Third Party Requester will probably have a decision by the
Patent Office stating that the validity of the patent is at least questionable and needs to be further examined.
If the Third Party Requester is a bit lucky, a first office action rejecting the claims will be issued with the order. This is a stronger statement than the initial order, because the Patent Office is stating not only that the patentability is questionable, but also that a prima facie case of invalidity has been made out. This has obvious value if it can be presented to a jury. If the office action rejecting the claims is not mailed with the order, however, it can take a
significant and somewhat unpredictable amount of time to issue.
Often, however, the Patent Owner’s response to an office action rejecting the claims is as interesting as the rejection. This usually at the latest within six months of the office action, but usually two to four months.176 The Patent Owner is often presented with several very unpleasant dilemmas in deciding how to respond to a rejection in a reexamination. If the Patent Owner amends the claim language to avoid the rejection, it gives rise to intervening rights.177 If
instead of making an amendment, the Patent Owner argues that the claims should be interpreted more narrowly than applied by the Patent Office, the Patent Owner must accept the risk that such limitations will be applied against the claims in a later Markman proceeding. If the Patent Owner argues that the prior art cited does not teach the claim elements, usually the safest course where the rejection is under section 102, it risks defining technological safe harbors for its targets.
The Third Party Requester is also interested in receiving a favorable Final Action, either an Action Closing Prosecution or Right of Appeal Notice. These actions, which indicate
different, but relatively final stages the Examiner’s decision making process, are typically issued after several years of reexamination.178 The probability of receiving a favorable first office action may be higher than the probability of receiving a favorable second office action, however. In some cases, it may be that the risk of an unfavorable second office action is high enough that the Third Party Requester will
not want one prior to trial. Then the likely timing relationship between the first and final office
actions becomes a significant factor. The probability of receiving a reexamination certificate (through all appeals) prior to the trial is almost zero, except for cases where the litigation is stayed, where a procedural mistake is made in the inter partes reexamination, or where neither party appeals an Examiner’s decision.
Consider Whether Events From The Reexamination Can Be Used
In Litigation. The timing and likelihood of success of the events in the reexamination must be considered together with the question of which events will be usable in litigation. There are several related questions here. First, can an event be admitted as evidence at trial, and if so, to what issues? Can an event be used as evidence in pretrial? Does a reexamination event have legal significance without needing to be introduced as evidence?
If past damages heavily outweigh likely future damages, this weighs in favor of filing for reexamination, of either the ex parte or inter partes variety. This is because amendments to the claims during reexamination can severely restrict the right to recover past damages. If the patent is likely to expire during the course of the reexamination, the Patent
Owner will have very little flexibility to amend the claims.
If the Patent Owner is forced by the Patent Office to amend the claims to gain their confirmation, there can be no liability for damages prior to the issuance of the reexamination certificate.
Consider Whether A Stay Is Possible
One reason to enter reexamination is the possibility of staying a litigation pending the results of the reexamination. The decision to stay a case is within the discretion of the
presiding judge, and results are highly variable from judge to judge.203 If litigation is ongoing, the defendant will need to research the stay history for the presiding judge to ascertain its chances. If litigation is not ongoing, the defendant will have little idea where the case is going to be filed, and will have to estimate its chances using national figures or its best guess at the likely districts.204
5. Choosing Between Ex Parte And Inter Partes Reexamination
If the choice has been made to file a request for reexamination, then the Third Party Requester must decide between ex parte and inter partes reexamination. This is typically a balancing of the advantages of inter partes reexamination (higher likelihood of success at each
stage) against its primary disadvantage (section 315(c) estoppel) as compared with ex parte reexamination. The visibility of the Third Party Requester in an inter partes reexamination can also be a concern, but is not likely to be relevant where litigation is in the air. Most Third Party Requesters would probably choose the procedural aspects of the
inter partes reexamination but for the section 315(c) estoppel. The question of the importance of the section 315(c) estoppel is one that can be much discussed, and will depend on the circumstances of each case. |
