- Reexamination Proceedings and Its Application in Patent Infringement Litigation
When a patent application is filed in the United States Patent and Trademark Office (USPTO), it is examined. Patents and other published documents that predate the earliest filing date of the patent application by more than one year are generally cited by the USPTO against the claims embodied in the pending application. The applicant for patent then has the opportunity to argue around the patents and references cited by the patent office, amend the claims or do both. Once a patent issues, it is presumed valid. However, the USPTO, recognizing that there are more than seven million issued patents, and also that the patent office is not privy to every printed publication or admission by an applicant, has provided a mechanism for assuring that only valid patents are, and remain issued. This mechanism is referred to as "Reexamination."
There are two types of reexaminations - - ex parte, available for all unexpired U.S. patents, and inter partes, available only for unexpired U.S. patents having an application filing date on or after November 29, 1999. Reexamination can only involve prior art in the form of patents, printed publications and admissions by the patent owner, and cannot raise other defenses available in patent litigation. Patent owners can file only ex parte reexaminations, while third party requesters can file both ex parte and inter partes reexaminations (assuming there is no privity to the patent owner).
The PTO traditionally has employed an ex parte reexamination procedure. At any time during the term of the patent, any person may request reexamination by the PTO of any claim of a patent on the basis of prior patents or printed publications cited under 37 C.F.R. 1.501. The request must be in writing and must be accompanied by payment of a reexamination request filing fee as set forth in 37 C.F.R. 1.20(c). If the request raises a substantial new question of patentability affecting any claim of the patent, reexamination is commenced. The same ex parte procedures that apply to initial examinations govern traditional reexamination. Patentees often invoke reexamination themselves, seeking to insulate their patents from late-surfacing prior art by cutting back the claims.
Since 1999 patent law has also provided an inter partes reexamination proceeding. Any person at any time may request such a proceeding, and if the request identifies a substantial new question of patentability, the PTO Director opens an inter partes proceeding. The procedures parallel those of initial examinations, but require service of documents on the third-party requester and permit the requester to file written comments each time the patent owner files a response to an action on the merits. The requester thus has some ability to participate in writing, but no opportunity for discovery, cross-examination, or oral presentations. Third-party requesters are estopped from asserting in litigation the invalidity of any claim on any ground that the requester "raised or could have raised" during the inter partes proceeding. Prior to enactment of a statutory amendment in November 2002, requesters could not appeal adverse decisions to the federal courts.
Both types of reexamination limit the issues that may be considered. The proceedings are confined to issues of novelty and nonobviousness based on prior art in the form of patents or printed publications. Reexamination does not permit challenges to enablement, written description, best mode, or utility.
Used properly, reexamination can be a potent tool in litigation. However, as will be explained in greater detail below, it can be a double-edged sword. In patent infringement litigation, reexamination can be employed to remove one or more patent claims in suit by having them declared invalid by the patent office. The party seeking reexamination files a request thereby stating that substantial new questions of patentability exist. These new questions of patentability are typically arrived at by directing the USPTO to prior art patents or other publications that the Patent Office did not consider during the examination of the application that matured into the questioned patent. These documents are generally discovered in a search of the records of the USPTO and in literature searches of printed publications.
In a litigation setting, admissions made by a plaintiff can also be submitted as evidence to the USPTO. During patent infringement litigation, a plaintiff will generally proffer a construction of one or more claims in the allegedly infringed patent. In support of its construction, the plaintiff will make statements explaining its position. The construction and the statements made in support thereof can, for the most part, be considered admissions. Requesting reexamination in patent infringement litigation can prove highly beneficial when a plaintiff attempts to put forth a claim construction that reads on a defendant's device but is substantially different than what is described in the patent. In such instances, the art considered by the USPTO during prosecution of the patent may not have encompassed such a construction. Accordingly, a defendant will conduct a search of the patent office records seeking patents that read on the plaintiff's claim construction. The uncovered patents together with the plaintiff's admissions can be used by the defendant to argue that one or more claims in the issued patent, in light of the previously unconsidered art and the plaintiff's admissions are invalid. Prior art previously considered by the USPTO in allowing the patent to issue can also be cited if presented in a new light.
If the USPTO finds that a substantial new question of patentability exists, a reexamination will be declared and the prosecution of the patent will be reopened. This means that the patent will essentially be treated as if it were a pending application. The Patent Office will issue actions rejecting the claims and the patentee will be allowed to respond. If the type of reexamination requested is inter parties then the party that sought reexamination will be allowed to reply to any response put forth by the patentee. Upon conclusion of the reexamination proceeding, the claims at stake may be found to be invalid, may be allowed in an amended form or may be held valid as originally issued.
In patent infringement litigation, once a reexamination is declared, a stay of the litigation is generally sought by the defendant pending the outcome of the reexamination. Currently the average time for completing an inter parties reexamination is three years. Nationwide, contested motions for stay pending reexamination are granted 59% of the time. Certain districts, such as the Southern District of California and the Northern District of Georgia are much higher (around 80%), while others, such as the Eastern District of Texas and the District of Massachusetts are much lower (around 40%).
Among the dangers associated with reexamination proceedings is that if the patent claims survive reexamination, they have been examined twice by the USPTO making the presumption of validity that much stronger. Moreover, the patentee has the opportunity to amend the claims in the patent thereby raising the potential in litigation to strengthen the claim of infringement. However, when judiciously applied, reexamination can be a potent means for narrowing or eliminating issues in infringement litigation.
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