Patent Law Practice Center

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.

The Impact of Therasense On Patent Reform

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…)

USPTO Receives Comments on Patent Reexamination Proposals

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals the USPTO is considering in it’s attempt to streamline patent reexamination.

USPTO Posts Public Comments on Patent Reexamination Streamline Proposals

As discussed [on Patents Post Grant] in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will now begin the process of considering to implement/modify the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here). (more…)

PATENT REFORM, CLOSE ENOUGH FOR GOVERNMENT WORK?