Patent Law Practice Center

Resolving Differences: How the Federal Circuit Treats Divergent USPTO and District Court Rulings

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…)

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…)

Reissue & Reexam Live Blog: Litigation Strategies

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. (more…)

Reexamination Strategies Concurrent with Litigation

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

I.  The Multi-Purpose Litigation Tool

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as vehicle to stay a district court litigation. Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional prosecution history for claim construction, avoid injunctive relief, demonstrate the materiality of a reference subject to an inequitable conduct defense, or establish objectively reasonable behavior for use in preventing a post-complaint willfulness finding. (more…)

Delaware District Court Protective Order Practice

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

The Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation.   In my article, Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware, I explain that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee.

In Delaware, the protective order issue has been viewed differently.

Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination. (more…)