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
(No Transcript)
6
(No Transcript)
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
???????????????
???????????????
Email gwheeler_at_mhmlaw.com
38
THANK YOU

• George WheelerMcAndrews, Held Malloy,
  Ltd.Chicago

Email gwheeler_at_mhmlaw.com
Tel [phone]