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PATENT RE-EXAMINATION


PREVIOUSLY CITED PRIOR ART IN A RE-EXAMINATION


A litigious patent owner approaches, citing a stack of prior art. An exhaustive prior art search reveals that the best art is already of


record. Given that a previously cited reference, even a strong one, is not usually effective in litigation, are there any alternative ways to use some of these references? Gregory V. Novak looks at the options.


The re-examination alternative


A patent re-examination is similar to a litigation invalidity defence, but there are some key differences. For instance, unlike litigation, a re-examination cannot raise all statutory challenges to validity. Specifically, re-examinations may only be based on certain types of prior art, specifically prior art patents or printed publications that create a substantial new question of patentability (SNQ).


As the Federal Circuit found in In re Etter: “[T]he intent underlying reexamination is to ‘start over’ in the PTO with respect to the limited examination areas involved, and to re examine the claims, and to examine new or amended claims, as they would have been considered if they had been originally examined in light of all of the prior art of record in the reexamination proceeding.”


As re-examinations are more limited in scope than litigation invalidity defences, one might ask why one would choose them. One answer is gleaned by comparing the success rates of re-examinations to those of litigation. According to at least one study, courts find asserted claims to be invalid about 41 percent of the time in litigation. In inter partes re-examination, the United States Patent and Trademark Office [PTO] finds all original claims to be unpatentable in 60 percent of cases. In addition, in both inter


partes and ex parte re-examinations, there is a possibility of an intermediate success that is not available in litigation, namely that some allowed claims are only allowed aſter being amended.


It is important to note that when a patent holder amends original claims during a re-examination proceeding, tremendous benefits accrue to the alleged infringer. For example, past damages and treble damages are usually no longer available under the intervening rights doctrine. In Bloom Eng’g. Co. v. North American Mfg., a company was held “not liable for infringement of…reexamined United States Patent…during the period before issuance of the reexamination certificate, because the claims were substantively changed during reexamination”.


In addition, claim amendments and prosecution history statements oſten create new non- infringement arguments. Terefore, the impact of cancelled, invalidated and amended claims results in a favourable outcome 95 percent of the time in inter partes re-examination.


The remarkable success rate of patent re-examination is attributable, at least in part, to differences in the presumption of validity between litigation and re-examination. In litigation, patent claims are presumed to be valid. Accused infringers bear the burden of proving


invalidity by clear and convincing evidence in the litigation context.


On the other hand, no presumption of validity exists during re-examination. In fact, during re-examination, “an examiner is not attacking the validity of a patent...” (In re Etter). Instead, in a re-examination, the examiner starts over and the requester must show claims to be unpatentable only by a preponderance of the evidence. Terefore, arguments challenging a patent in a re-examination generally have a higher chance of success than the same arguments would have in litigation.


Cited art


To meet the burden of proving invalidity, litigators prefer to rely on prior art not considered by the PTO because, as reported in Am. Hoist & Derrick, “[d]eference is due the Patent and Trademark Office decision to issue the patent with respect to evidence bearing on validity which it considered...”. On the other hand, “[w]hen new evidence touching validity of the patent not considered by the PTO is relied on, the tribunal considering it is not faced with having to disagree with the PTO or with deferring to its judgment or with taking its expertise into account. Te evidence may, therefore, carry more weight and go further toward sustaining the attacker’s unchanging burden.”


PRESENTING


32 World Intellectual Property Review September/October 2010


www.worldipreview.com


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