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Reexamination in the US An Effective Business Strategy

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Post-litigation 'doomsday' strategy. Moderating the pace of litigation ... Jan. 23 '06 - certiorari denied. 23 'Doomsday' strategy. Meanwhile in the PTO: ... – PowerPoint PPT presentation

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Title: Reexamination in the US An Effective Business Strategy


1
Reexamination in the US An Effective Business
Strategy
  • George WheelerMcAndrews, Held Malloy,
    Ltd.Chicago

Email gwheeler_at_mhmlaw.com
2
Topics
  • ABCs of reexamination
  • Post-litigation doomsday strategy
  • Moderating the pace of litigation
  • Breaking patents without litigation

3
Topics
  • ABCs of reexamination

4
Reexamination
  • Definition
  • Not a patent application
  • Resolves substantial new question of
    patentability
  • Result is a reexam certificate confirming or
    canceling existing claims, possibly adding new or
    amended claims

5
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7
Reexamination
  • Effects
  • During reexam, patent is in force
  • Claims can be added, confirmed, amended, or
    canceled (not broadened)
  • Potential for intervening rights
  • Commonly less work, for requester than patentee
  • Cannot be settled, once started

8
Reexamination
  • Definition (two kinds of reexam)

Examiner
  • Ex parte
  • Started by anyone (requester)
  • 3rd party input usually limited to request

Patentee
9
Reexamination
  • Definition (two kinds of reexam)
  • Inter partes
  • Requested only by 3d party
  • Requester has input throughout prosecution and
    appeal

Examiner
Patentee
Requester
10
Ex Parte Reexamination
  • Purposes
  • Correct a patent
  • Challenge validity
  • Force stay of litigation

11
Ex Parte Reexamination
  • Basic Procedure
  • Request
  • Reexam order
  • Patent Owner Statement (optional)
  • Reply by Requester, if P.0.S.
  • 1st, Final Office Actions
  • Notice of Intent (NIRC)

12
Ex Parte Reexamination
  • Fundamental differences from regular examination
  • No continuation practice or Requests for
    Continued Examination
  • Patent owner has less time
  • New examiner
  • No 112 issues, limited prior art
  • Cant broaden claims (directly)

13
Ex Parte Reexamination
  • Patent owners escape hatch
  • Overlapping reexamination requests
  • need 2d new question
  • Overlapping reexamination and reissue

Rxm. Request 2
Rxm. Request 1
14
Ex Parte Reexamination
  • Advantages to third party
  • First ruling in three months (very likely
    granted)
  • Puts patent under cloud
  • Might kill or weaken patent
  • Might produce useful estoppels
  • Vehicle for staying litigation

15
Ex Parte Reexamination
  • Disadvantages to third party
  • If patent survives, it is stronger
  • Usually, little or no rebuttal
  • Patent owner has opportunity to clear newly
    discovered prior art

16
Ex Parte Reexamination
  • Third party rebuttal strategy
  • Overlapping reexamination requests
  • Need 2d new question

17
Inter Partes Reexamination
Examiner
Requester
Patentee
18
Inter Partes Reexamination
  • Purpose
  • Patent owner cannot use
  • Used to challenge patent validity
  • Not best for staying litigation

19
Inter Partes Reexamination
  • Basic Procedure
  • Request
  • Reexam order 1st Office Action
  • NO Patent Owner Statement or 3d party reply
  • Action Closing Prosecution
  • Byzantine end game
  • No 3d party escape hatch

20
Inter Partes Reexamination
  • Advantages to third party patent owner is behind
    the 8-ball
  • 1st office action usually comes with reexam order
  • No interview to assist development of response
  • Requester always gets the last word
  • Back end loop
  • Third party appeal of patentability

21
Inter Partes Reexamination
Examiner
Patentee
Requester
22
Inter Partes Reexamination
  • Disadvantage to Third party estoppels
  • Issues raised in reexamination
  • Issues that could have been raised in
    reexamination
  • Issues previously raised/available in litigation

23
Doomsday strategy
  • Case study NTP v. RIM the BlackBerry case
  • 02 - Patent owner NTP won trial
  • 270 F. Supp. 2d 751
  • Injunction awarded, stayed
  • 03-05 - Appeal to Fed. Cir.
  • 418 F.3d 1282
  • Jan. 23 06 - certiorari denied

24
Doomsday strategy
  • Meanwhile in the PTO
  • 02 - PTO sua sponte orders reexam of 5 patents
  • 03 to 05 - RIM requests 14 more reexams
  • Several requests per patent
  • Two inter partes, 17 ex parte
  • Mega files, mergers, gridlock

25
Doomsday strategy
  • Feb. 24 06 - Injunction hearing
  • Litigation appeals exhausted
  • Reexam completion years away
  • Court to RIM settle now or be enjoined
  • Design-around apparently weak
  • RIM settled to avoid panic

26
Doomsday strategy
  • Why doomsday
  • RIM has a paid-up license
  • RIM might be better off if the patents withstand
    reexamination
  • But reexaminations cant be settled, once ordered
  • Reexams too late to help RIM much

27
Doomsday strategy
  • Recommendation
  • Dont wait until you lose the trial to request
    reexamination
  • Better Options
  • Reexam to moderate litigation
  • Reexam instead of litigation

28
Moderating Litigation
  • Two variants without and with stay of litigation
  • Without stay
  • Generally started late in pre-trial phase
  • Use same paper prior art as trial
  • Purpose to seek stay of injunction, possibly
    complete reexam before appeals exhausted

29
Moderating Litigation
  • Without stay
  • No reference
  • Theory
  • Need to start earlier than per Doomsday strategy
    to finish in time
  • Avoid stay because you want litigation discovery
    early on
  • One problem same prior art, same appellate
    court, same result?

30
Moderating Litigation
  • With stay
  • Start reexam early in pre-trial phase (to
    increase chance of stay)
  • Purpose 1 to seek tactical stay of litigation
    (use extra time to seek better prior art outside
    the litigation)
  • Purpose 2 Force claim amendments, intervening
    rights
  • Purpose 3 delay your cash flow

31
Moderating Litigation
  • With stay
  • Reference Control No. 90/005,283
  • Reexam prosecuted to final rejection before
    patentee recovered
  • Litigation stayed over a year
  • Every remaining claim new or amended intervening
    rights
  • Client tactical objectives met

32
Moderating Litigation
  • With stay
  • Dealing with patentee laundering of pat. and
    publ. prior art
  • Patentee will send all prior art to PTO and use
    favorable results later in litigation (if patent
    survives in PTO)
  • Strategy best if case also involves significant
    non-pat., non-publ. prior art

33
Litigation Alternative
  • Use reexam to attack problematic patents without
    litigation
  • Goal David v. Goliath result
  • Requester has complete control of costs patentee
    does not
  • Can be filed anonymously

34
Litigation Alternative
  • Limitations of reexam-only tack
  • Most patents survive reexam in some form if so,
    stronger
  • Useful if more conservative strategies are too
    expensive
  • Consider inter partes reexam if estoppels not too
    painful
  • Be ready to walk away if you lose

35
Litigation Alternative
  • Reference Control Nos. 90/001,275 90/001,277
  • Client not yet in market
  • Willing to condition market entry on result of
    reexam
  • Market too small for litigation

36
Litigation Alternative
  • Reexam cost a couple weeks work of one in-house
    counsel
  • Result all claims of both patents canceled.
  • Note strategy not commonly this successful.

37
Questions
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Email gwheeler_at_mhmlaw.com
38
THANK YOU
  • George WheelerMcAndrews, Held Malloy,
    Ltd.Chicago

Email gwheeler_at_mhmlaw.com
Tel 312-775-8000
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