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2686.04 Reexamination and Litigation Proceedings [R-7] - 2600 Optional Inter Partes Reexamination
2686.04 Reexamination and Litigation Proceedings [R-7]
35 U.S.C. 314 Conduct of inter partes reexamination proceedings.
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(c) SPECIAL DISPATCH.- Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.
35 U.S.C. 317 Inter partes reexamination prohibited.
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(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
35 U.S.C. 318 Stay of litigation.
Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.
37 CFR 1.987 Suspension of inter partes reexamination proceeding due to litigation.
If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
37 CFR 1.907 Inter partes reexamination prohibited.
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(b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
35 U.S.C. 311 permits a request for inter partes reexamination to be filed "at any time." Thus, requests for inter partes reexamination can be filed where the patent (for which reexamination is requested) is involved in concurrent litigation. The guidelines set forth below will generally govern Office handling of inter partes reexamination requests where there is concurrent litigation.
I. **>COURT-ORDERED/SANCTIONED< REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION
Where a request for reexamination indicates >(A)< that it is filed as a result of an order by a court **>or an agreement by parties to litigation which agreement is sanctioned by a court, or (B)< that litigation is stayed for the purpose of reexamination, >the request will be taken up by the examiner for decision 6 weeks after the request is filed, and< all aspects of the proceeding will be expedited to the extent possible. Cases will be taken up for action at the earliest time possible, and **>Office actions in these reexamination proceedings will normally set a 1-month shortened statutory period for response rather than the 2 months usually set in reexamination proceedings. Response periods< may be extended only upon a strong showing of sufficient cause (see MPEP § 2665). Action on such a proceeding will >generally< take precedence to any other action taken by the examiner in the Office. See generally In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. R.L. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981).
In addition, if (A) there is litigation concurrent with an inter partes reexamination proceeding and (B) the reexamination proceeding has been pending for more than one year, the Director or Deputy Director of the Office of Patent Legal Administration (OPLA), Director of the Central Reexamination Unit (CRU), or a Senior Legal Advisor of the OPLA, may approve Office actions in such reexamination proceeding setting a one-month or thirty days, whichever is longer, shortened statutory period for response rather than the two months usually set in reexamination proceedings. A statement at the end of the Office action - "One month or thirty days, whichever is longer, shortened statutory period approved," followed by the signature of one of these officials, will designate such approval. It is to be noted that the statutory requirement for "special dispatch" in reexamination often becomes important, and sometimes critical, in coordinating the concurrent litigation and reexamination proceedings.
II. FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE
If a Federal Court decision on the merits of a patent is known to the examiner at the time the determination on the request for inter partes reexamination is made, the following guidelines will be followed by the examiner:
(A) The Third Party Requester Was Not a Party to the Litigation.
When the initial question as to whether the art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different art does not necessarily preclude the presence of a new question. This is true because of the different standards of proof and claim interpretation employed by the District Courts and the Office. See for example In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the PTO) and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35 U.S.C. 282 presumption of patent validity has no application in reexamination proceedings). Thus, while the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court's decision on validity, since the decision is not controlling on the Office.
A non-final holding of claim invalidity or unenforceability will also not be controlling on the question of whether a substantial new question of patentability is present.
Only a final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
(B) The Third Party Requester Was a Party to the Litigation.
Final Holding of validity: The provisions of 37 CFR 1.907(b) apply. Where a final decision was entered against a party in a Federal Court civil action (arising in whole or in part under 28 U.S.C. 1338) that the party did not sustain its burden of proving invalidity of a patent claim in suit, that party and its privies may not request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in the civil action >(as to those asserted by the patent owner, and/or challenged by the third party requester, and resolved in favor of the patent owner in the civil action)<. Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office, i.e., the proceeding will be concluded. Note, however, that the statute does not preclude an ex parte reexamination by the same third party requester.
In view of the above, when the examiner is aware that the third party requester was a party to previous Federal Court litigation as to the patent for which inter partes reexamination has been requested, the examiner must determine:
(1) Was the Federal Court decision adverse to the third party requester as to at least one claim of the patent?
(2) Was the Federal Court decision a final decision, after all appeals?
(3) Is the issue being raised in the reexamination request the same issue as was raised in the Federal Court during the civil action, or an issue that the third party requester could have raised in the Federal Court during the civil action?
- If the answer to each of questions (1)-(3) is "yes" for all claims for which reexamination was requested in the proceeding, then the inter partes reexamination prosecution must be terminated. In such a case, the Central Reexamination Unit (CRU) Director will prepare a decision discussing the above considerations (1)-(3) and vacating the reexamination proceeding.
- If the answer to all of questions (1)-(3) is "yes" for one or more (but not all) of the claims for which reexamination was requested in the proceeding; those claims will not be treated. The examiner's action will point out the claims not treated and the reason why, i.e., a discussion of the above considerations (1)-(3). The guidelines set forth above in subsection II.(A) will be used for the claims remaining.
- If the answer to question (1) or to question (3) is "no" for all claims for which reexamination was requested, then the examination of the reexamination proceeding will proceed without any discussion on the record of considerations (1)-(3), using the guidelines set forth above in subsection II.(A).
- If, for any claim for which reexamination was requested, the answer to both of questions (1) and (3) is "yes", but the answer to question (2) is "no", then examination of the reexamination proceeding will proceed using the guidelines set forth above in subsection II.(A). The examiner's action will contain a discussion of considerations (1)-(3). If the examiner subsequently becomes aware that the Federal Court decision has become final, reexamination of the affected claims must be discontinued. If all claims being examined are affected, the reexamination will be vacated by the CRU Director as discussed above. See also subsection V. below.
Final Holding of invalidity: A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Where all claims for which reexamination was requested are affected, the reexamination will be vacated by the CRU Director. A non-final holding of claim invalidity or unenforceability, however, will not be controlling on the question of whether a substantial new question of patentability is present.
(C) Specific Situations.
For a discussion of the policy in specific situations where a Federal Court decision has been issued, see MPEP § 2642 and subsection V. below.
>Note the following two Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office's rejections even though parallel district court proceeding upheld the claims as valid and infringed. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007).
In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an "Order of Dismissal with Prejudice." The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding.
In Translogic, a district court infringement suit proceeded in parallel with a reexamination proceeding. The district court upheld the validity of the patent in the infringement suit, while the reexamination examiner found the claim combination to be obvious. The examiner's rejection was affirmed by the Board of Patent Appeals and Interferences (Board). The defendant (the alleged infringer) of the infringement suit appealed the district court decision to the Federal Circuit, while the patent owner appealed the Board's decision to the Federal Circuit. The Federal Circuit consolidated the appeals, and then addressed only the patent owner's reexamination appeal from the Board. The Federal Circuit affirmed the examiner's conclusion of obviousness by relying upon and providing an extensive discussion of KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).<
III. REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT DECISION
In view of the statutory mandate to make the determination on a request for reexamination within 3 months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the Federal Court. It is not realistic to attempt to determine what issues will be treated by the Federal Court prior to the Court's decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the Court. If reexamination is ordered, the reexamination generally (see discussion immediately below) will continue until the Office becomes aware that a court decision has issued. At such time, the request will be reviewed in accordance with the guidelines set forth below.
In Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988), the Court of Appeals for the Federal Circuit stated the following as to the Office's authority to stay a reexamination process pending the outcome of a Federal District Court case where invalidity is an issue:
"Whatever else special dispatch means, it does not admit of an indefinite suspension of reexamination proceedings pending conclusion of litigation. If it did, one would expect to find some intimation to that effect in the statute, for it would suggest the opposite of the ordinary meaning. But there is none."
"The Commissioner. has no inherent authority, only that which Congress gives. It did not give him authority to stay reexaminations; it told him to conduct them with special dispatch. Its silence about stays cannot be used to countermand that instruction."
The Ethicon case was decided as to ex parte reexamination, for which 35 U.S.C. 305 dictates in its last sentence:
"All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office."
For inter partes reexamination, however, 35 U.S.C. 314 states:
"Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office."
35 U.S.C. 314 provides for inter partes reexamination the clause "*>[u]nless< otherwise provided by the Director for good cause" *>, this< clause is not present in 35 U.S.C. 305 for ex parte reexamination. Accordingly, where there is good cause for the Director of the USPTO to suspend (stay) reexamination proceedings pending the conclusion of litigation, a suspension will be effected. **>This matter will be approached on a case-by-case basis. See< subsection V. below for the situation where there *>was< pending litigation having the potential to terminate a reexamination prosecution under 35 U.S.C. 317(b)>, and a suspension was granted<. If the examiner believes there is "good cause" to suspend (stay) reexamination proceedings, the case should be brought to the Office of Patent Legal Administration (OPLA) for consideration of such by a Reexamination Legal Advisor (RLA). **
>It should be noted that a suspension will not be considered on its merits prior to ordering of reexamination. Until that point, there is no proceeding to suspend, and the Office must issue its decision on the request within the statutorily mandated 3 months. Also, suspension will not be considered on its merits when there is an outstanding Office action. In order to ensure consideration on the merits of a petition to suspend where there is an outstanding Office action, the patent owner must (1) provide a complete response to the outstanding Office action, (2) include a petition to suspend under 37 CFR 1.182, and (3) include a petition under 37 CFR 1.182 for OPLA to take jurisdiction of the proceeding prior to issuing an Office action on the submitted response and retain such jurisdiction until OPLA issues its decision on the petition to suspend.<
It should >also< be noted that if, pursuant to 35 U.S.C. 318, a court stays litigation as to the patent being reexamined, action in the reexamination proceeding would not be suspended. This is so because action in the reexamination proceeding would be needed to resolve the "issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order" set forth in 35 U.S.C. 318.
IV. FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED
Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding must promptly notify the Office of any Federal Court decision involving the patent.
Upon the issuance of a holding of claim invalidity or unenforceability by a Federal Court, reexamination of those claims will continue in the Office until the decision becomes final. A non-final Court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.
Where an inter partes reexamination proceeding is currently pending and a final Federal Court decision issues after all appeals, the reexamination proceeding is reviewed to see if no substantial new question of patentability remains (as to one or more claims) due to holding of claims invalid, and to determine whether the provisions of 37 CFR 1.907(b) apply as a result of a decision in a civil action arising in whole or in part under 28 U.S.C. 1338.
A final Court holding of invalidity/unenforceability is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the reexamination. The reexamination will continue as to any remaining claims. If all of the claims being examined are finally held invalid or unenforceable, the reexamination will be vacated by the CRU Director as no longer containing a substantial new question of patentability and the reexamination prosecution will be terminated. If not all claims being examined were held invalid, a substantial new question of patentability may still exist as to the remaining claims. In such a situation, the remaining claims would be examined; and, as to the claims held invalid, form paragraph 26.80 should be used at the beginning of the Office action.
¶ 26.80 Claims Held Invalid by Court, No Longer Being ReexaminedClaims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claims [1] were held invalid by the [4].
Examiner Note:
1. In bracket 1, insert the claims held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, Schor et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. Kery Fries, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).
The issuance of a final Court decision >after all appeals< (in a civil action arising in whole or in part under 28 U.S.C. 1338) upholding validity during an inter partes reexamination, where the person who filed the request was a party to the litigation, will have the effect that the Office will discontinue examination of all claims affected by the holding of validity >(for issues raised or could have been raised as to those claims asserted by the patent owner, and/or challenged by the third party requester)<. If the provisions of 37 CFR 1.907(b) apply such that all of the claims in the reexamination proceeding cannot be maintained, the order to reexamine is vacated by the CRU Director, and reexamination is terminated. If the provisions of 37 CFR 1.907(b) apply to some of the claims, but not all of the claims in the proceeding; those claims to which 37 CFR 1.907(b) applies will not be treated. The examiner's action will point out the claims not treated, and the reason why those claims cannot be maintained in the reexamination under 37 CFR 1.907(b). Action will be given on the remaining claims. Note that the provisions of 37 CFR 1.907(b) cannot be waived since they track the statute, 35 U.S.C. 317. See also subsection V. below.
The issuance of a final Court decision upholding validity during an inter partes reexamination, where the person who filed the request was not a party to the litigation, will have no binding effect on the examination of the reexamination. This is because the Court stated in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court's holding of patent validity and should continue the reexamination. The Court noted that District Courts and the Office use different standards of proof in determining invalidity, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a District Court must be shown by "clear and convincing" evidence, whereas in the Office it is sufficient to show non-patentability by a "preponderance" of the evidence. Since the "clear and convincing" standard is harder to satisfy than the "preponderance standard," a court's holding of patent validity is not controlling. Deference will, however, ordinarily be accorded to the factual findings of the court, where the evidence before the Office and the court is the same. If sufficient reasons are present, claims held valid by the court may be rejected in reexamination.
V. DISCUSSION OF AFFECT OF LITIGATION WHERE REQUESTER WAS A PARTY TO THE LITIGATION
For inter partes reexamination, 35 U.S.C. 317(b) provides:
"Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit., then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action., and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings." [Emphasis added]
Where a final decision was entered against a party in a Federal Court civil action (arising in whole or in part under 28 U.S.C. 1338) that the party did not sustain its burden of proving invalidity of a patent claim in suit, then that party and its privies may not request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in the civil action. Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office; in such an instance, the prosecution will be terminated and the proceeding will be concluded. This is a statutory estoppel which can attach to an inter partes reexamination third party requester that is also a party to litigation concerning the patent for which reexamination has been requested.
35 U.S.C. 314(c) states:
"Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office." [Emphasis added]
The statute thus authorizes the Director of the USPTO to suspend (stay) reexamination proceedings, where there is good cause to do so, pending the conclusion of litigation based on a potential for termination of a reexamination prosecution under 35 U.S.C. 317(b). Thus, a District Court decision that is pending appeal on the validity of the same claims considered in an inter partes reexamination proceeding may provide the requisite statutory "good cause" for suspension, due to the real possibility that the 35 U.S.C. 317(b) estoppel may attach in the near future to bar/terminate the reexamination proceeding. Any such fact situation is resolved on a case-by-case basis.
In any inter partes reexamination where the requester (or its privies) is also a party to ongoing or concluded litigation as to the patent for which reexamination has been requested, the potential for this statutory estoppel to attach must be considered. The following provides a discussion of the interaction of 35 U.S.C. 317(b), 35 U.S.C. 314, and the inter partes reexamination process.
Congress, in creating the inter partes reexamination statutory framework in 2002, borrowed heavily from the existing ex parte reexamination regime. For example, inter partes reexamination proceedings, like ex parte reexaminations, must be conducted with "special dispatch." 35 U.S.C. 314(c). Unlike ex parte reexamination, however, Congress provided the Office with the statutory authority and discretion to suspend inter partes reexamination proceedings for "good cause." See 35 U.S.C. 314(c).
Another difference between the two regimes is that Congress specifically provided estoppel provisions to shut down an inter partes reexamination of a patent claim when a "final decision" upholding the validity of that claim has been reached in a civil action or in a prior inter partes reexamination proceeding. See 35 U.S.C. 317(b); 35 U.S.C. 315(c). Thus, if a party's challenge to the validity of certain patent claims has been finally resolved, either through civil litigation or the inter partes reexamination process, then (A) that party is barred from making a subsequent request for inter partes reexamination (or filing a new civil action) challenging the validity of those same claims, and (B) "an inter partes reexamination previously requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office." Id.
The statute and legislative history of the estoppel provisions make it clear that the inter partes reexamination of a claim (requested by a party) must be terminated once a final decision upholding the validity of that claim (challenged by the same party) has issued "after any appeals," not simply just after a district court decision which is still pending on appeal. While Congress desired that the creation of an inter partes reexamination option would lead to a reduction in expensive patent litigation, it nonetheless also provided in the statute that a court validity challenge and inter partes reexamination of a patent may occur simultaneously; but once one proceeding finally ends in a manner adverse to a third party, then the issues raised (or that could have been raised) with respect to the validity of a claim in that proceeding would have estoppel effect on the same issues in the other proceeding.
Taking the above into account, the following factors are to be considered in determining whether it is appropriate to refuse to order an inter partes reexamination, terminate the reexamination, or suspend action in the reexamination, based on litigation in which the reexamination requester is a party to the litigation.
(A) The 35 U.S.C. 317(b) estoppel applies only to patent claims that were litigated in the suit, i.e., litigated claims. The estoppel does not apply to non-litigated patent claims.
Where there are non-litigated claims for which reexamination had been requested in the inter partes reexamination request, the reexamination proceeding is to go forward based on those non-litigated claims. If, however, during the reexamination proceeding, the patent owner disclaimed all the non-litigated claims, leaving only litigated claims, the proceeding is to be referred to the Office of Patent Legal Administration (OPLA).
(B) The 35 U.S.C. 317(b) estoppel applies only to issues which the requester or its privies raised or could have raised in the civil action. The estoppel does not apply where new issues are raised in the request.
If the request provides new art/issues not raised in the litigation (civil action), and which could not have been so raised, then estoppel does not attach. The patent owner has the burden of showing that the art and issues applied in the request was available to the third-party requester and could have been placed in the litigation.
(C) The 35 U.S.C. 317(b) estoppel applies only in a situation where a final decision adverse to the requester has already been issued.
If there remains any time for an appeal, or a request for reconsideration, from a court (e.g., District Court or Federal Circuit) decision, or such action has already been taken, then the decision is not final, and the estoppel does not attach. A stay/suspension of action may be appropriate for the reexamination proceeding if the litigation has advanced to a late enough stage and there is sufficient probability that a final decision will be adverse to the requester; however, that is a matter to be discussed with the OPLA in any such instance.
(D) Is there a concurrent ex parte reexamination proceeding for the patent?
As stated in MPEP § 2286: "The issuance of a final Federal Court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination. This is because the court states in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court's holding of patent validity and should continue the reexamination." If there is a concurrent ex parte reexamination proceeding having overlapping issues with an inter partes reexamination proceeding where the estoppel has the potential to attach, but no final decision has been issued, then the Office may in some instances (depending on the individual facts and circumstances), to go forward with statutorily required "special dispatch" as per Ethicon in a merged proceeding containing both the inter partes reexamination and the ex parte reexamination. This is a matter of administrative convenience to avoid rework and make the process more efficient. Again, OPLA should be consulted.
(E) Some examples of where this estoppel issue was actually addressed by the Office.
In reexamination control numbers 95/000,093 and 95/000,094 (the '093 and '094 proceedings), action was suspended based on ongoing litigation. After a District Court decision adverse to requester, it was determined that "good cause" existed to wait for the outcome of the Federal Circuit appeal, because the reexamination proceedings were only at their beginning stages, while the concurrent litigation was potentially near its final resolution. It was noted that requester had chosen to permit the District Court litigation to proceed for three years before filing its requests for reexamination, the filing taking place only after judgment was entered in patent owner's favor in the litigation. Had requester filed its requests for reexamination earlier, the reexamination proceedings would have been much farther along in the process, and may likely have been completed at the Office before the District Court issued its decision. Moreover, had requester filed its reexamination requests earlier in the litigation, the District Court might have stayed the litigation to await the Office's decisions in the two reexamination proceedings. After choosing to go years through the entire District Court litigation proceeding without asking for the Office's input, requester was not in a position to complain that a suspension of the '093 and '094 reexamination proceedings would deprive requester of a chance to obtain the Office's decision, when there was a strong possibility that the Federal Circuit's decision would estop the Office from issuing any decision at all. In short, requester could not have it both ways. Requester waited three years after the district court case began, and waited until after the District Court issued a final decision, such that its District Court litigation could in no way be affected by any decision on its reexamination requests. Requester's delay was the reason that the '093 and '094 reexaminations could very well be mooted before any reexamination decision issued and the USPTO Director found "good cause" to suspend the proceedings. >On May 22, 2006, the U.S. District Court, Eastern District of Virginia, in Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006), issued a decision upholding the Office's finding of "good cause" to suspend the '093 and '094 inter partes reexamination proceedings.< Requester chose its route >(litigation)< and had to deal with the consequences of its decision, i.e., a suspension of the reexamination proceedings. On the other hand, see reexamination control numbers 95/000,020, 95/000,071 and 95/000,072, for decisions in which action was not suspended, because the specific facts dictated otherwise.
VI. LITIGATION REVIEW AND CRU APPROVAL
In order to ensure that the Office is aware of prior or concurrent litigation, the examiner is responsible for conducting a reasonable investigation for evidence as to whether the patent for which reexamination is requested has been, or is, involved in litigation. The investigation will include a review of the reexamination file, the patent file, and the results of the litigation computer search by the Scientific and Technical Information Center (STIC). If the examiner discovers, at any time during the reexamination proceeding, that there is litigation or that there has been a Federal Court decision on the patent, the fact will be brought to the attention of a Reexamination Legal Advisor (RLA) of the OPLA prior to any further action by the examiner. The RLA will provide the examiner with guidance as to compliance with Office policy where there is concurrent litigation.
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