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

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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

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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

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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

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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?

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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?

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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

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• 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

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

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

Legislation