Next up is Scott McKeown of Oblon Spivak, writer for Patents Post Grant and Practice Center Contributor.  He discussed patent reexamination as a litigation tool.  Some highlights from his presentation…

1. Reexamination v. Litigation Standards: A huge benefit of reexamination with concurrent litigation is in the lower standards. No presumption of validity, preponderance of evidence standard and broadest reasonable claim interpretation.
2. Patents that are ideal for reexamination (invalidity purposes): broad claims, patents subject to inter partes reexam, predictable arts (KSR), and patents with alternative basis for attack.
3. Patents that are less ideal (invalidity purposes only): famous products (TiVo, Plavix, iPhone), unpredictable arts (Chem, Bio/Pharma), large portfolios (Rambus), portfolios with active continuations.  However complete invalidity is only ONE of MANY litigation purposes.
4. Reexamination Uses (Pre-Suit Strategies): attack anonymously (ex parte-avoid litigation), leverage opinion expense by converting to reexamination request (verify strength of position), force broad patent to be narrowed (non-infringement), secure intervening rights, or attack reissue filing by initiating reexam merger.
5. Pre-Trial Uses of Patent Reexam: **Stays pending patent reexamination, claim construction (file in advance of Markman), intervening rights (reduced damage exposure), willfulness/inequitable conduct, or coloring injunction equities.
6. Post-Trial Strategies include: second chance (Translogic v. Hitachi), avoiding injunction (Ebay factors… balance of hardships?), reducing future license fees, vacating  judgment/causing dismissal of case or race to conclusion (IPR)

** Stays pending patent reexamination are discretionary — depends on the Court (Texas/Calif.) It’s factor based – Court’s consider prejudice, whether or not it will simplify issues, discovery status, stipulations.

** When it comes to Stays, there is a significant amount of forum shopping that occurs. 

McKeown concludes by saying that Reexamination provides many more benefits than just invalidity attack.  He says to consider the benefits of reexamination prior to litigation, consider court attitude to tactics/stays, and keep on top of new tactics!

Tags: Claim Construction, concurrent litigation, ebay factors, Reexamination strategies, stays pending patent reexamination, Translogic v. Hitachi

This entry was posted on Friday, February 4th, 2011 at 19:54 and is filed under Patent Law Institute, Reexamination. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.