Terms and Concepts

Pending Reexamination

Each claim of a patent is presumed valid under and may be enforced notwithstanding the presence of a pending reexamination proceeding.  Although litigation may move forward in parallel with a reexamination proceeding, at the district court’s discretion, the results of the reexamination proceeding may have an effect on the litigation.  A patent is not revised by any amendment or canceled of a claim made during a reexamination proceeding until a reexamination certificate is issued [35 U.S.C. 307].

Concurrent Reexamination and Litigation

If there is concurrent litigation and reexamination on a patent, and the request for reexamination was filed as a result of court order or the litigation has been stayed for the purpose of reexamination, the Office will expedite the proceedings by taking the case up for action at the earliest possible time, setting shorter response times, and permitting extensions of time only upon a strong showing of sufficient cause [MPEP 2286].

A court decision holding that a patent claim is valid will not preclude the Office from continuing to reexamine such claim in an ex parte reexamination proceeding, even if the court decision is final and non-appealable.  The Office applies the “broadest reasonable interpretation” for claim language in a reexamination proceeding because claims may be amended during the proceeding.  Courts apply a less liberal standard of claim interpretation, and therefore, the Office may conclude that a claim held valid in a court proceeding is unpatentable or invalid in an ex parte reexamination proceeding [MPEP 2286].

A final, non-appealable court decision holding that a patent claim is invalid will preclude the Office from ordering any reexamination proceeding for such claim or  will result in termination of any reexamination proceeding previously ordered regarding such claim. [MPEP 2286]

It should be noted that with respect to inter partes reexamination, a final, non-appealable holding in litigation that a patent claim is valid may operate to estop a party from even requesting inter partes reexamination of that claim, or from maintaining a previously ordered inter partes reexamination of that claim.  Estoppel may also operate to preclude a party who has obtained an Order Granting Inter Partes Reexamination of a patent claim from asserting invalidity of that claim in litigation under Section 1338 of Title 28 on grounds that such party raised, or could have raised, during that inter partes reexamination, if that claim has been finally determined to be patentable in the inter partes reexamination proceeding [MPEP 2686.04(V)].