|Patent Re-examination in Lieu of Litigation: Will They Work for Your Business|
|Written by David Bailey|
|March 02, 2011|
Los Angeles Daily Journal
Businesses are increasingly aware that patent reexaminations are a lower cost alternative to patent litigation. Less widely known is the fact that the likelihood of a patent being invalidated through reexamination is relatively low and that a poorly executed reexamination can actually strengthen a patent. The decision whether to put a patent into reexamination is best framed in terms of managing liability for patent infringement.
When executed correctly, the combination of a reexamination and a thoughtful redesign of an accused product can avoid liability for patent infringement entirely. Reexaminations are extremely effective at forcing patent owners to amend the claims of their patents, which can eliminate liability for past infringement. If the reexamination proves effective in invalidating the patent, then that is simply a bonus.
What is a reexamination?
There are two types of
How is a reexamination initiated?
Claims can be challenged on the basis that they are anticipated by a specific piece of prior art, meaning that all of the elements of the claim are disclosed within the prior art reference. Claims can also be challenged on the basis that they are obvious, which typically involves relying on multiple pieces of prior art to demonstrate that all of the elements of the claim were present in the prior art and that it was obvious to have combined them.
The USPTO almost always grants requests for reexamination, even when the request for reexamination is based on prior art that has already been considered by the patent office. Therefore, the mere granting of a request should not be viewed as an indicator that the patent will ultimately be found invalid.
How successful are
Inter partes reexaminations are more successful with 47 percent of patents invalidated and an additional 43 percent involving claim amendments. The increased likelihood of invalidating a patent through inter partes reexamination has resulted in an increase in their popularity. In the USPTO fiscal year 2010, 281 inter partes reexaminations were filed, with 100 filed between October 1 and December 31, 2010. This is compared with one inter partes reexamination filed in the USPTO fiscal year 2001.
long does a reexamination take?
When will a reexamination eliminate past liability?
When the requestor submits prior art that anticipates the relevant claims of the patent, the USPTO will typically force the patent owner to amend the claims to differentiate the claimed invention from the prior art. When the requestor submits prior art that renders the relevant claims obvious, the patent owner can overcome the rejections without amending the claims. In the event that the only prior art available renders the relevant claims obvious, then the additional cost of an inter partes reexamination is advisable so the requestor can respond to attempts by the patent owner to overcome the prior art without amending the claims.
Will litigation be stayed during a reexamination?
The sooner the reexamination is filed the greater the likelihood that litigation will be stayed. If the patent office has already determined that a substantial question of patentability has been raised by the reexamination request, then the likelihood of a stay is increased. In addition, agreeing not to raise the same issues at trial in an ex parte reexamination can also increase the likelihood that a stay will be granted.
reexamination strengthen a patent?
Given that the patent is likely to emerge from reexamination, the patent that emerges will enjoy a presumption of validity over all the cited art and may include claims that are significantly harder to invalidate during litigation. Furthermore, the patent that emerges from reexamination may be perceived as having “survived” a validity challenge and a court or jury may be reluctant to invalidate the patent during subsequent litigation.
The best way to manage the risk that a patent will be strengthened through the reexamination process is to redesign the accused product during the pendency of the reexamination so that the redesigned product clearly does not infringe the patent.
When is a reexamination a bad idea?
The patent owner could use the reexamination as an opportunity to respond to the recent In re Bilski decision by adding limitations that increase the likelihood that the claims will be found to relate to statutory subject matter. Where the patent may have been procured through inequitable conduct related to a patent owner’s failure to cite relevant prior art, a reexamination may present an opening for the patent owner to cite the prior art minimizing the importance of its failure to do so in the past.
Overall, reexaminations can be an effective tool for managing liability for patent infringement. However, care should be taken to ensure that initiating a reexamination does not increase the likelihood that the patent owner will prevail during litigation.
David Bailey is a partner of KPPB, LLP an intellectual property law firm located in Irvine, California. David is one of the most highly sought after attorneys in the high technology sector due to his deep technical knowledge of digital signal processing and the online distribution of digital media. He can be reached at email@example.com.