patent reexamination: best practices for pursuing and defending parallel reexamination and...

Patent Reexamination: Best Practices for Pursuing and

Defending Parallel Reexaminationand Litigation

2

The Stats

PTO Fiscal Quarter2008 2009 2010

Proc

eedi

ngs

3

31%32%Ex Parte

Requests with Related Litigation

FY 2004 FY 2009

19% 68%Inter Partes Requests with Related Litigation

FY 2004 FY 2009

The Stats

4

Claims changed in

3,469 (64%)

All claims confirmed in 1,410 (26%)

All claims canceled in 554 (10%)

2009

All claims canceled in 95

(15%)

All claims confirmed in

102 (14%)

Claims changed in 492 (71%)

Through 2008

Ex Parte Stats

5

2009Through 2008

Inter Partes Stats

All claims canceled

in 31 (70%)

All claims confirmed in 4 (9%)

Claims changed in

9 (20%)All claims confirmed in 7 (8%)

Claims changed in 46 (51%)

All claims canceled in

37 (41%)

6

2009 Ex Parte

Ex Parte v. Inter Partes

All claims confirmed in

7 (8%)Claims

changed in 46 (51%)

All claims canceled in 37

(41%)

2009 Inter Partes

All claims canceled in 95

(15%)

All claims confirmed in

102 (14%)

Claims changed in 492 (71%)

7

% Stays Granted

(Cases Reported January 1991 -

April 2010)

38.9%

Was 34%

61.8%

Was 68% 51.7%

Was 39.1%

63.6%

was 50%

Stays

36%

68%

50% 50%

67%59.7%

0

10

20

30

40

50

60

70

ED Texas ND Cali D. Del ED VA WD Wisc. AllDistricts

8

Safoco v. CameronNo. 4:05cv00739, 2009 WL 2424108 (S.D.Tex. 2009)

• “Based on the authorities cited by Cameron, the court concludes that a patent claim is not ‘finally determined to be valid and patentable,’ 35 U.S.C. § 315(c), in an inter partes reexamination proceeding until the USPTO issues a reexamination certificate”

• Certificate issues after Article III appeals exhausted

9

In re Translogic Technology504 F.3d 1249 (Fed.Cir. 2007)

• Reexamination can nullify verdict • Both cases were on appeal at the same

time• Fed Cir affirmed reexam and remanded

district court case for dismissal• If reexam appealed later, would

injunction be lifted?

10

In re Swanson540 F.3d 1368 (Fed.Cir. 2008)

• Office may consider during reexamination the same issue of validity as a prior federal court case

• Reexam requests now often filed late in the case as “second bite”– Lift injunction?– Nullify ongoing royalties?

11

Amado v. Microsoft517 F.3d 1353 (Fed.Cir. 2008)

• Denial of relief from judgment on basis of disclaimer by plaintiff during reexamination of patent filed by defendant

• Precedent requires defendant to be “faultless in the delay”

• Defendant delayed in filing reexam request, waited till after trial to file reexam request

12

• Don’t try to tell your litigation story• Examiners sometimes use narrower

construction than courts• How exactly would references be

combined by a POSITA?• 132 declarations• In an IPR, get your art in early (R.948)

Recent Lessons from the Front

13

• Amended S.515 changes IPR into 1 year proceeding before APJ

• First window only• Estoppel provision back in• Applies to all patents

Legislation