The following article discussing what happens when the Federal Circuit is faced with conflicting USPTO and district court determinations comes courtesy of Lisa Dolak, Professor of Law at Syracuse University and Practice Center Contritor.
Concurrent litigation and reexamination proceedings, although related in that they concern the same patent(s) and (typically, presumably) at least some of the same claims, proceed independently. And, different standards govern validity and claim construction in the two venues. As the Federal Circuit explained in In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008):
In civil litigation, a challenger who attacks the validity of patent claims must overcome the presumption of validity with clear and convincing evidence that the patent is invalid. . . . In [USPTO] examinations and reexaminations, the standard of proof – a preponderance of evidence – is substantially lower than in a civil case; there is no presumption of validity.
Id. at 1376. Additionally, “unlike in district courts, in reexamination proceedings ‘[c]laims are given ‘their broadest reasonable interpretation, consistent with the specification. . .’’” Id. at 1377-78 (quoting In re Trans Texas Holdings Corp., 498 F.3d 1290, 1296-97 (Fed. Cir. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984))). Accordingly, as the Federal Circuit has noted, “the two forums take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988). (more…)