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A key publication for patent owners, litigators, and IP professionals operating in today’s global economy, Patent Office Litigation is a two-volume set focused on the new contested proceedings under the America Invents Act. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice. To order your copy of Patent Office Litigation today, click here.

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Quick Stat

193

Total Number of requests for Covered Business Method patent review filed as of July 31, 2014

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1563

Total number of requests for Inter Partes Review filed as of July 31, 2014

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Essentials

Common Questions

Common questions range from “What is patent reexamination?” to “What are the options for appeal following an adverse BPAI decision?” No matter what stage of deliberation you find yourself, be mindful of the “parallel universe” and ask the right questions.

General Info

  1. What are the differences between an ex parte reexamination and an inter partes reexaminations?  
  2. Where can I find statute, rules, and PTO procedures for ex parte and inter partes reexamination?  
  3. What is the Central Reexamination Unit (CRU)? What is its role in reexamination proceedings and determining patent validity?  
  4. Who can file an ex parte reexamination request? Who can file an inter partes reexamination request?  
  5. How long does it take for the PTO to grant or deny a request? Once granted, how long does a reexamination last?  
  6. What is the difference between a reexamination and reissue?  
  7. Are reexaminations becoming more common? Are ex parte or inter partes reexaminations more common by comparison?  
  8. What percentage of applications involved in a reexamination have their claims confirmed? Is this different between ex parte and inter partes?  
  9. Can the grant of a reexamination or the denial of a request for reexamination be challenged? How and when is this appropriate?  
  10. Who examines a request for reexamination? Is the Examiner who examined the original application involved?  

Prosecution

  1. Is the burden of proof in a reexamination identical to normal prosecution?  
  2. Is there a presumption of validity for claims in a reexamination proceeding?  
  3. When can a reexamination request be filed?  Can multiple requests be filed on the same patent, concurrently, serially, or both?  
  4. Is it possible to stay a pending reexamination before the USPTO?  How would this differ with requesting a stay in a District Court?  
  5. What are the required elements of a reexamination request?  
  6. What is a substantial new question of patentability (SNQ)?  
  7. What rejections can be raised in a reexamination request?  
  8. Can you conduct interviews in a reexamination proceeding?  
  9. What are the options for Appeal of an ex parte reexamination following an adverse BPAI decision?  
  10. What are the options for Appeal of an inter partes reexamination following an adverse BPAI decision?  

Concurrent Proceedings

  1. Can claims confirmed without change during reexamination have their validity contested in a later District Court proceeding?  
  2. Can a reexamination request be filed against claims of a patent during a District Court litigation involving the patent?  
  3. Can a reexamination be stayed in favor of a concurrent litigation?  
  4. What impact does a Federal Court decision have on a patent undergoing reexamination?  
  5. Can reexamination affect past damages?  Do intervening rights apply to claims amended during reexamination?  
  6. Is a patent enforceable while it is undergoing reexamination?  
  7. Can a reexamination be terminated if the parties settle?  
  8. How is concurrent reissue and reexamination proceedings on the same patent handled by the PTO?  
  9. How are concurrent (thus multiple) reexamination proceedings on the same patent handled by the PTO?  
  10. Can a District Court judge contact the Central Reexamination Unit (CRU) at the USPTO?  What issues may this raise in the litigation?  

General Info

1.

What are the differences between an ex parte reexamination and an inter partes reexaminations?

Ex parte and inter partes reexaminations differ in several important respects.  The differences between the two should be carefully considered before a request for reexamination is filed.  Ex parte reexamination requests may be filed anonymously by any party, at any time.  Inter partes reexamination requests must identify the real party in interest filing the request, and can only be filed for patents that issued from an original application filed in the United States on or after November 29, 1999.  In ex parte reexamination, a patent owner is permitted (but not required) to submit a statement in response to a third party’s request for reexamination.  The third party requestor is entitled to respond to the statement.  However, after that point in an ex parte reexamination, a third party requestor cannot otherwise participate in the reexamination proceeding and cannot appeal the United States Patent and Trademark Office decisions, although the third party requester will receive copies of office actions and patent owner replies.  In inter partes reexamination, the third party requester is entitled to file comments in response to submissions made by the Patent Owner (e.g., Replies to Office Actions and petitions) and can appeal the PTO’s decisions.  The estoppels created as a result of an inter partes reexamination and concurrent litigation may be the most important difference between the two types of reexamination.  Estoppels in an inter partes reexamination flow two ways—from the inter partes reexamination to the civil action and from the civil action to the inter partes reexamination.  In a subsequent civil action, a party cannot argue invalidity of a claim finally determined to be valid or patentable on any ground which that party raised or could have raised during the inter partes reexamination.   The third party is not, however, precluded from asserting invalidity based on newly discovered art that was unavailable to the third party requester and the PTO at the time of the inter partes reexamination.  Similarly, once a final decision has been entered against a party in a civil action that the party has not sustained its burden of proving the invalidity of any patent claim in suit, the party and its privies cannot request inter partes reexamination on the basis of issues that the third party raised or could have raised in the civil action.  No such estoppel provisions exist for ex parte reexaminations.

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2.

Where can I find statute, rules, and PTO procedures for ex parte and inter partes reexamination?

The patent laws governing ex parte reexamination are codified in §§ 302-307 of Chapter 30 of Title 35 of the United States Code (”U.S.C.”).  The federal regulations governing ex parte reexaminations are codified in Sections 1.501 – 1.570 of the Title 37 of the Code of Federal Regulations.  The PTO’s guidelines for ex parte reexamination procedure can be found in Chapter 2200 of the Manual of Patent Examining Procedure (the “MPEP”).  The patent laws governing inter partes reexamination are codified in §§ 311-318 of Chapter 31 of Title 35 of the United States Code (”U.S.C.”).  The federal regulations governing inter partes reexaminations are codified in Sections 1.902 – 1.997 of Title 37 of the Code of Federal Regulations.  The PTO’s guidelines for inter partes reexamination procedure can be found in MPEP Chapter 2600.

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3.

What is the Central Reexamination Unit (CRU)? What is its role in reexamination proceedings and determining patent validity?

The PTO made a commitment in 2005 to make reexamination a more streamlined and viable venue for post-grant validity challenges by creating the Central Reexamination Unit (“CRU”).  The CRU handles all reexaminations (with a small except of certain reexaminations having concurrent reissues) regardless of technology, and the majority legacy reexaminations have been transferred to the CRU from their respective technology centers.  The CRU is currently headed by a new CRU Director, Mr. Greg Morse, who assumed his new duties on June 23, 2008.  The examiners in the CRU are selected from the ranks of the PTO examiner corps and have an average of approximately 17 years of examining experience.  Many of the CRU examiners also have advanced technical degrees and/or law degrees.  The CRU examiners are evaluated on work quality and workflow, not on production quotas as is the case with the regular examiner corps.

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4.

Who can file an ex parte reexamination request? Who can file an inter partes reexamination request?

Ex parte reexamination requests may be filed anonymously by any party, at any time.  A patent owner is permitted to file an ex parte reexamination its patent.   Inter partes reexamination cannot be filed anonymously.  An inter partes reexamination request must identify the real party in interest filing the request, and can only be filed for patents that issued from an original application filed in the United States on or after November 29, 1999.  A patent owner is not permitted to file an inter partes reexamination against its patent.

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5.

How long does it take for the PTO to grant or deny a request? Once granted, how long does a reexamination last?

Pursuant to 35 U.S.C. § 303(a) for ex parte reexamination and § 312(a) for inter partes reexamination, the PTO has three months from the filing of a satisfactory request in which to decide whether to grant or deny the request.  The grant decision is based on whether at least one substantial new question of patentability has been raised in the request.  The CRU has established an internal goal to issue a final office action or an Action Closing Prosecution (“ACP”) within two years of the filing date of a request for reexamination.  Using the 2-year-to-final-action metric, the chemical/biological group has no backlog, while nearly 90% of the mechanical reexaminations achieved this goal.  However, only 70% of the electrical/software/business method reexaminations resulted in a final action by the 2-year point.  As yet, there are currently no reliable statistics on the pendency of reexaminations appealed to the Board of Patent Appeals and Interferences.  In an April 2008 briefing on inter partes reexaminations, the Institute for Progress estimated the average pendency for an un-appealed inter partes reexamination as more than 3.5 years, and the expected pendency for appealed inter partes reexamination as at least 6.5 years.  Reexamining Inter Partes Reexamination, Institute for Progress (April 2008).

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6.

What is the difference between a reexamination and reissue?

There are many differences between a reexamination and a reissue.  Some of the most important differences are listed below.  The PTO may regain jurisdiction over an issued patent for reissue when “the patent is, through error without a deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent….” 35 U.S.C. § 251.  A request for reexamination is only proper when a “substantial new question of patentability” is raised by the prior art presented in the request.  A reexamination cannot be filed to correct a specification, a priority claim, drawings, etc.  A reissue proceeding can only be initiated by the patent owner, whereas both inter partes and ex parte reexaminations can be initiated by the patent owner or a third party.  Claims involved in a reexamination proceeding can not be broadened in scope.  In contrast, claims involved in a reissue proceeding may be enlarged in scope if the reissue was filed within two years from the grant of the original patent, assuming the other requirements for a reissue have been met.  However, a reissue cannot recapture subject matter that was disclaimed during original prosecution.

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7.

Are reexaminations becoming more common? Are ex parte or inter partes reexaminations more common by comparison?

Ex parte reexaminations are far more common than inter partes reexaminations.  680 ex parte reexaminations were filed in fiscal 2008.  The number of yearly ex parte reexamination filings has increased steadily over the last eight years.  168 inter partes reexaminations were filed in fiscal 2008.   The number of inter partes reexamination filings has increased dramatically over the past few years and that pattern appears to be continuing.  As of June 30, 2009, 195 inter partes reexaminations had already been filed, more than were filed in all of fiscal year 2008.

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8.

What percentage of applications involved in a reexamination have their claims confirmed? Is this different between ex parte and inter partes?

Twenty five percent of ex parte reexaminations have resulted in confirmation of all claims.  Eleven percent of ex parte reexaminations have resulted in all claims being cancelled, with the remaining sixty four percent of ex parte reexaminations resulting in some changes to the claims.  To date, only five percent of inter partes reexaminations have resulted in confirmation of all claims.  Sixty percent of inter partes reexaminations have resulted in all claims being cancelled or disclaimed, with the remaining 35 percent of reexaminations resulting in changes to the claims.

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9.

Can the grant of a reexamination or the denial of a request for reexamination be challenged? How and when is this appropriate?

A third party requester may file a petition to request review of a refusal to order inter partes reexamination within one month of the mailing date of the decision (See 37 C.F.R. 1.515 for ex parte reexamination and 37 C.F.R. 1.927 for inter partes reexamination).  A patent owner may file a petition to vacate an ultra vires reexamination order in cases where no discretion to grant the reexamination exists.  Such circumstances include where the reexamination order is not based on prior art patents or printed publications, all claims of the patent were held to be invalid by a final decision of a Federal Court after all appeals, reexamination was ordered for the wrong patent, reexamination was ordered based on a duplicate copy of the request, or reexamination order is based wholly on the same question of patentability raised by the prior art previously considered in an earlier concluded examination of the patent by the PTO (See MPEP §§ 2246 and 2646).

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10.

Who examines a request for reexamination? Is the Examiner who examined the original application involved?

Reexamination proceedings (with the except of certain reexaminations having concurrent reissues) are handled by experienced patent examiners of the Central Reexamination Unit (CRU).  Preparation of each office action involves two patent examiners and one supervisory patent examiner.  One patent examiner prepares the office action, and then the second patent examiner and the supervisory patent examiner review the office action before it is mailed.  The assigned examiner is not an examiner who examined the original patent application.  If a reexamination is merged with reissue, the merged proceedings may be sent to technology center for prosecution.  However, jurisdiction of the merged proceedings stays with the CRU, not the technology center reissue examiner.

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Prosecution

1.

Is the burden of proof in a reexamination identical to normal prosecution?

Yes.  Both the CRU and the PTO use a “preponderance of the evidence” standard for deciding patentability (See, e.g., MPEP §706.1).  In other words, the Examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.  The standard of review for patent validity is different in district court litigation than it is before the CRU in patent reexamination proceedings.  In district court, patent claims enjoy a presumption of validity, which may be overcome only by clear and convincing evidence.  In contrast, no such evidentiary presumption exists during reexamination before the PTO.  The PTO and the CRU use a “preponderance of the evidence” standard for adjudicating patentability as MPEP § 706.I. states: “The standard to be applied in all cases is the ‘preponderance of the evidence’ test.  In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.”

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2.

Is there a presumption of validity for claims in a reexamination proceeding?

No.  The standard of review for patent validity is different in district court litigation than it is before the CRU in patent reexamination proceedings.  In district court, patent claims enjoy a presumption of validity, which may be overcome only by clear and convincing evidence.   In contrast, no such evidentiary presumption exists during reexamination before the PTO.  The district courts determine “validity,” while the PTO reexamines “patentability” and a patent owner faces many practical limitations in its ability to amend claims during reexamination.  Furthermore, no proposed amended or new claim enlarging the scope of claims of a patent is permitted in a reexamination proceeding [35 U.S.C. § 305].  The test for when an amended or new claim enlarges the scope of an original claim is the same as that under the 2-year limitation for reissue applications that add enlarging claims under 35 U.S.C. § 251, last paragraph [MPEP § 2250 (citing In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994)].

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3.

When can a reexamination request be filed?  Can multiple requests be filed on the same patent, concurrently, serially, or both?

Both ex parte and inter partes reexaminations can be filed at any time during period of enforceability of patent.  The period of enforceability is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action (35 U.S.C. § 286).  For ex parte reexaminations, multiple requests for serial and/or concurrent reexamination requests can be filed by the same party, provided that the prior art forming the basis for a proposed SNQ in subsequent requests is not cumulative to the prior art previously considered.  There is no legal limit on the number of ex parte reexamination requests that can be filed.  However, the bar for establishing a valid SNQ may become higher with each reexamination request.  For inter partes reexaminations, once a request for inter partes reexamination has been granted, the same third party requester cannot file a subsequent request for inter partes reexamination while the prior inter partes reexamination is pending. 37 C.F.R. § 1.907(a).  However, the third party requester can file a concurrent ex parte reexamination.  Additionally, the third party requester may file a serial inter partes reexamination request following conclusion of a prior inter partes reexamination if new prior art is uncovered.

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4.

Is it possible to stay a pending reexamination before the USPTO?  How would this differ with requesting a stay in a District Court?

Stays are also technically available in reexaminations.  Unlike the district courts, however, the PTO does not have an unfettered ability to control its docket.  The rules provide the ability for the patent owner to request a stay [37 C.F.R. §§1.565(b) and 1.987].  Generally, the PTO has been unwilling to grant such stay requests due to the statutory mandate to handle reexaminations with special dispatch.  However, in an inter partes reexamination, the PTO may be amenable to a stay where the reexamination proceeding is at its beginning stages, the litigation is near a final resolution, and estoppel would render all issues in the reexamination moot when the litigation becomes final.  To avoid a possible stay of the reexamination proceeding, the requester should file a reexamination request as early as practical in a concurrent litigation.

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5.

What are the required elements of a reexamination request?

An ex parte reexamination request must contain: (1) a statement pointing out each SNQ, (2) a detailed explanation of the pertinence and manner of applying the cited patents and printed publications to every claim for which reexamination is requested, (3) a copy of every patent or printed publication relied upon in the SNQ, (4) a copy of the patent for which reexamination is requested, (5) certification that a copy of the request has been served on the patent owner, and (6) the appropriate fee payment. 37 C.F.R. § 1.510(b).

An inter partes reexamination request must contain: (1) identification of the patent and every claim for which reexamination is requested, (2) a citation of the patents and printed publications for the SNQ, (3) a statement pointing out each SNQ, (4) a copy of every patent or printed publication relied upon in the SNQ, (5) a copy of the patent for which reexamination is requested, (6) certification by the third party requestor that a copy of the request has been served on the patent owner, (7) certification by the third party requestor that the estoppel provisions of § 1.907 do not prohibit reexamination, and (8) a statement identifying the real party of interest. 37 C.F.R. § 1.915(b).

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6.

What is a substantial new question of patentability (SNQ)?

As part of the reexamination statutes, Congress struck a balance between curing allegedly defective patents and preventing the harassment of patent owners.  To perform this gatekeeping function, Congress adopted a standard requiring a request for reexamination to raise a “substantial new question of patentability.”  See H.R. Rep. No. 107-120, at 1. See also, In re Recreative Technologies, 83 F.3d 1394, 1397 (Fed. Cir. 1996.)

35 U.S.C. § 303 for ex parte and § 312 for inter partes require the Commissioner to “determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request.”  Congress intended these statutory provisions to limit reexamination to references that raise “new information about pre-existing technology which may have escaped review at the time of the initial examination of the application.”  See H.R. Rep. No. 96-1307, 96th Cong., 2d Sess. 3 (1980).

The SNQ must originate from a prior patent or printed publication.  An SNQ is not a proposed ground of rejection (a “prima facie” case of unpatentability).  The existence of an SNQ is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.  However, not all previously considered references (”old art”) or unconsidered references (”new art”) may raise an SNQ. Old art can only be used to support an SNQ only if shown in a new light.   New art can be used to support an SNQ only if the technological teaching relied upon in the art is not cumulative to technological teaching previously considered by the Office.

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7.

What rejections can be raised in a reexamination request?

Original unamended claims in a reexamination proceeding are examined solely on the basis of patents and printed publications.  See 37 C.F.R. §§ 1.552 and 1.906.

When new claims are added, original claims are amended, or where any part of the disclosure is amended, the claims are examined for compliance with 35 U.S.C. § 112.  However, consideration of 35 U.S.C. § 112 issues is limited to the amendatory language.   Double patent is normally proper for consideration in reexamination.  See In re Lonardo, 119 F.3d 960 (Fed. Cir. 1997).

A rejection in a reexamination proceeding therefore cannot be based on any other statutory provisions, including whether the claims contain statutory subject matter under section 101, whether there exists an “on-sale bar” or “public use” under section 102(b), or whether claims where abandoned under section 102(c).  Conduct issues also cannot be raised during a reexamination proceeding.

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8.

Can you conduct interviews in a reexamination proceeding?

In ex parte proceedings, interviews with the examiner are permitted after receipt of the first Office Action.  A complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner after the interview (37 C.F.R § 1.560).  Interviews in inter partes proceedings are not permitted.  All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.  Only questions related to strictly procedural matters may be discussed with employees of the PTO. 37 C.F.R. 1.955.

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9.

What are the options for Appeal of an ex parte reexamination following an adverse BPAI decision?

For ex parte reexaminations filed before November 29, 1999, the patent owner may appeal a decision of the Board of Patent Appeals and Interferences to either the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. § 141 or to the United States District Court for the District of Columbia pursuant to 35 U.S.C. § 145.  For ex parte reexaminations filed on or after November 29, 1999, the patent owner may appeal the decision of the Board of Patent Appeals and Interferences only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. § 141.  Note that the appeal provision of 35 U.S.C. § 306 contains some ambiguity as it states that the patent owner “may seek court review under the provisions of sections 141 to 145 of this title.”  However, 35 U.S.C. § 145 only permits appeal by “patent applicants” and not by “patent owners.”  The third party requester may not seek judicial review.  However, some courts have permitted intervention by the third party requester in appropriate circumstances.

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10.

What are the options for Appeal of an inter partes reexamination following an adverse BPAI decision?

For any inter partes reexamination proceeding commenced on or after November 2, 2002, a patent owner or a third party requester dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences may appeal to the United States Court of Appeals for the Federal Circuit.  Either the patent owner or the third party may also be a party to any appeal taken from a reexamination decision of the Board of Patent Appeals and Interferences.  The patent owner and/or third party requester may not appeal to the Federal Circuit until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable to the Federal Circuit.  If the patent owner files a notice of appeal to the Federal Circuit, the third party requester may cross appeal to the Federal Circuit if the third party is also dissatisfied with the decision of the Board of Patent Appeals and Interferences.  Similarly, if the third party requester files a notice of appeal to the Federal Circuit, the patent owner may cross appeal to the Federal Circuit if also dissatisfied with the decision of the Board of Appeals and Interferences.   For any inter partes reexamination proceeding commenced prior to November 2, 2002, only the patent owner can appeal to the United States Court of Appeals for the Federal Circuit.

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Concurrent Proceedings

1.

Can claims confirmed without change during reexamination have their validity contested in a later District Court proceeding?

The answer to this question depends on the type of reexamination and the identity of parties.  Because no estoppels attach to ex parte reexamination requesters, a party in a later arising litigation may use any prior art to challenge the validity of the claims in District Court, including prior art raised in the reexamination.  The situation is more complex for inter partes reexaminations.  The provisions of 35 U.S.C. § 315(c) estop a third-party requester from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceeding.

For inter partes reexamination where a party in the litigation is not the third party requester of the reexamination, the validity of reexamined claims finally determined to be valid and patentable can be challenged in the litigation based on any prior art, including prior art raised during the reexamination.  For inter partes reexamination where a party in the litigation is the third party requester of the reexamination, the validity of reexamined claims finally determined to be valid and patentable cannot be challenged in the litigation based on any prior art that was raised or could have been raised during the inter partes reexamination proceeding.  The validity of the claims however may be challenged on newly discovered prior art unavailable to the third party requester at the time of the inter partes reexamination proceeding.

Note that some courts have instituted a form of estoppels when granting stays of the litigation in favor of an ex parte reexamination.  In these situations, the courts estopped the party to the litigation requesting the concurrent reexamination from challenging the reexamined claims based on the prior art included in the request for reexamination.

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2.

Can a reexamination request be filed against claims of a patent during a District Court litigation involving the patent?

Yes.  Both ex parte and inter partes reexaminations can be filed against a patent concurrently involved in a District Court litigation.  For inter partes reexamination, if the party requesting the reexamination is also a party to the litigation, the estoppel provisions of 35 U.S.C. § 317(b) may apply.  Once a final decision has been entered against a party in the litigation that the party has not sustained its burden of proving the invalidity of any patent claim in suit, then neither than party nor its privies may request an inter partes reexamination of any such patent claim based on issues which that party or its privies raised or could have raised in the litigation.  See 35 U.S.C. § 317(b).

However, an inter partes reexamination may be based on newly discovered prior art that was unavailable to the third-party requester and the PTO at the time of the inter partes reexamination proceeding.

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3.

Can a reexamination be stayed in favor of a concurrent litigation?

By statute, the PTO must handled reexamination proceedings with “special dispatch.”  The statutory mandate of “special dispatch” dictates whether a reexamination proceeding can be stayed in favor of a concurrent litigation.  For ex parte reexamination, the Federal Circuit found that the PTO could not indefinitely stay an ex parte reexamination in favor of the concurrent District Court litigation.  However, the statutory language for inter partes reexamination provides that the director may depart from the “special dispatch” requirement and stay a reexamination proceeding where “good cause” exists.  Good cause to stay an inter partes reexamination has been found in a very narrow circumstance where it was likely that the issues raised in the reexamination would be mooted by a final decision in the District Court (due to the estoppel provisions) prior to any decision in the reexamination.  See Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

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4.

What impact does a Federal Court decision have on a patent undergoing reexamination?

A non-final Federal Court decision has no binding effect on a concurrent reexamination proceeding.  However, a final Federal Court decision may have a binding effect.  If the final Federal Court decision upholds the validity of claims in a patent, the Federal Court decision has no biding effect on the reexamination.  However, a final Federal Court holding of invalidity or unenforceability (after all appeals) is binding on the PTO.

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5.

Can reexamination affect past damages?  Do intervening rights apply to claims amended during reexamination?

Amendments to claims during reexamination may impact the ability for the patent owner to collect past damages.  Any new claims introduced during the reexamination proceeding or amended claims not “substantially identical” to an original patent claim may not be enforced prior to the date of the reexamination certificate.  That is, past damages are extinguished for any amended claims that are not “substantially identical” to an original patent claim.  There is no per se rule for determining whether a claim is not “substantially identical.”  The analysis includes examining “the claims of the original and the reexamined patents in light of the particular facts, including prior art, the prosecution history, other claims, and any other pertinent information.”  The determination is a legal one, and a claim is changed if its scope is changed.  Intervening rights resulting from reexamination proceedings parallels the intervening rights resulting from reissue patents.  See 35 U.S.C. § 316.  Section 252 states that the court may provide for “the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.”

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6.

Is a patent enforceable while it is undergoing reexamination?

A patent undergoing reexamination remains enforceable.  Each claim of a patent is presumed valid under and may be enforced notwithstanding the presence of a pending reexamination proceeding [35 U.S.C. 282, See Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988); See also Viskase Corp. v. Am. Nat'l Can Co., 261 F.3d 1316, 1328, 59 USPQ2d 1823, 1831 (Fed. Cir. 2001); In re Etter, 756 F.2d 852, 857, 225 USPQ 1, 4 (Fed. Cir. 1985)(en banc)].  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 [See e.g., In re Translogic, 504 F.3d 1249 (Fed. Cir. 2007)].  A patent is not revised by any amendment or cancellation of a claim made during a reexamination proceeding until a reexamination certificate is issued [35 U.S.C. 307].

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7.

Can a reexamination be terminated if the parties settle?

A settlement agreement in a concurrent litigation will not operate to terminate a reexamination proceeding, even where the same prior art was used to challenge the same patent claims.  The PTO takes the position that a settlement agreement is not a final decision on the merits of validity of a patent and therefore will not terminate the reexamination proceeding.

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8.

How is concurrent reissue and reexamination proceedings on the same patent handled by the PTO?

Where a reissue application and a reexamination are co-pending, the PTO may merge the proceedings or suspend one of the two proceedings.  It is the general policy of the PTO that the two proceedings will not be allowed to proceed simultaneously without merger or suspension of one or the other.  The reason for the policy is to permit timely resolution of both the reissue and the reexamination, and to prevent inconsistent and possibly conflicting amendments.  Therefore, even if the parties do not make a specific petition for merger or suspension, the PTO will take action sua sponte to prevent parallel proceedings.  Because of the statutory mandate to treat reexaminations with “special dispatch,” the PTO should not suspend the reexamination unless there were exceptional circumstances.  This is especially true due to the potential for extending prosecution of reissue applications through continuation applications or requests for continued examination.  As with the merger of multiple reexamination requests, the determination to merge or suspend is made by the Office of Patent Legal Administration, and the decision is made on a case-by-case basis.

Factors include:

(i) timing (whether reissue was filed first);

(ii) the statutory mandate to treat reexaminations with “special dispatch”;

(iii) the fact that the reissue could continue indefinitely via continuation applications; and

(iv) whether the patent owner consented to a stay of the reissue application.

A merger order will typically lay out the ground rules for the merged proceeding to proceed simultaneously.  Importantly, jurisdiction of a merged proceeding stays with the CRU, not with the Technology Center reissue examiner.

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9.

How are concurrent (thus multiple) reexamination proceedings on the same patent handled by the PTO?

Multiple ex parte reexaminations on the same patent will generally be merged.  However, the decision is at the sole discretion of the Office, which will take into account its statutory mandate of “special dispatch.”  If one of the multiple copending reexamination requests is inter partes, then the merger decision proceeds under the inter partes rules.  According to the MPEP, merger decisions are made by the Office of Patent Legal Administration (OPLA).  After multiple reexaminations have been ordered, the CRU will deliver the multiple orders to the OPLA, and OPLA will determine whether and how the reexamination should be merged.  OPLA will thereafter issue a merger order that will govern the merged proceedings.  The merged proceedings will then proceed under the inter partes rules, except that the third party requester will maintain its rights under the ex parte rules–e.g., the third party requester would maintain its right to respond to any patent owner’s statement.  No ex parte rights appear to remain with the patent owner and the right to interview any ex parte issues appears to be foreclosed as a general rule.  If a party feels its ex parte rights have been unfairly terminated by a merger, then it may consider a Rule 181 petition to preserve ex parte rights.

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10.

Can a District Court judge contact the Central Reexamination Unit (CRU) at the USPTO?  What issues may this raise in the litigation?

Judges deciding a motion to stay, or presiding over a concurrent litigation stayed pending a reexamination, may consider contacting the CRU.  The Office of Patent Legal Administration (OPLA) has a hotline for questions dealing with “Reexamination and Reissue Legal and Policy Guidance.”  The authors have found the staff to very helpful and responsive to all manner of requests.  The authors have been informed that calls from judicial clerks to the PTO have occurred.  Some commentators argue that this ability to contact the CRU when deciding a motion to stay is a valuable tool to a judge deciding whether to grant a stay motion.  What restrictions, if any, should be placed on communications between federal judges and CRU officials?  Should these communications be limited strictly to procedural details or as fellow government officials should judges be provided less restrictive communication?  These questions remain open.

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