Patent Law Practice Center

Should the PTO’S Reexamination Analysis Impact ITC Cases?

Until now, the  CAFC has not answered the question of the level of consideration a court or the ITC should give to an earlier reexamination and the effect those reexamination findings should have in the present proceeding or investigation.  Scott Daniels, Partner at Westerman Hattori Daniels & Adrian and Practice Center Contributor, passed along this article discussing an investigation pending at the ITC wherein the Commission has raised this question.  Daniels weighs in on whether the CAFC will take this opportunity to answer this looming question.

In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG.  This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM.  As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues. (more…)

What Happens After A Case Is Stayed Pending Patent Reexamination?

Scott A. McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing what happens to a district court/ITC litigation when the Court stays the ongoing case pending the outcome of a parallel reexamination.  According to the article, a large percentage of these cases end favorably for the defendants.  McKeown examines whether or not this reality will ultimately result in increased reexamination filings.

42% of 2007 Cases Remain Stayed

Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.

But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request? (more…)

Deciding Whether To Stay A Case Pending Reexamination

Scott Daniels, Partner at Westerman, Hattori, Daniel & Adrian and Practice Center Contributor, sent in this article discussing the standard applied by trial judges when determining whether to stay a patent infringement case pending reexamination.  According to the article, rather than applying the “universally accepted standard” of clear and objective, the standard is commonly applied in an extremely subjective manner. Daniels examines whether the problem is with the trial judges or with the standard itself.

The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective.  A court is to apply its discretion in light of the following factors:

(1)   whether discovery is complete and a trial date is set, i.e., is the case in its early stages;

(2)   whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and

(3)   whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused  infringer for some tactical reason.

Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion. (more…)

Cost Benefits Of Concurrent Patent Reexamination

The following post comes from Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action. (more…)

Reissue & Reexam Live Blog: Ethical Considerations

The last panel of the day – Ethical Considerations in Reissues and Reexaminations. The panel includes Gerald Murphy, Jr., Partner at Birch Stewart Kolasch & Birch and Practice Center Contributor, and Barbara Mullin of Akin Gump Strauss Hauer & Feld.  Here are some highlights from the panel:

• Reissue and Reexam overlap where the error is overly broad claiming in view of prior art.  If patentee becomes aware of prior art that does not invalidate the claims but does raise a substantial new question of patentability and there are no other errors in the patent that render it wholly or partly inoperative or invalid, only option is ex parte reexam.  If patentee can identify another error in addition to new prior art, Reissue becomes available. 
• Both Reissue and Reexam can give rise to charges of inequitable conduct.
• Patents being reissued and reexamined may present unique issues because: they are often very important, the amount of available “information” potentially material to patentability might be much greater than the information available during the original prosecution, and/or parallel litigation is not unusual. (more…)