MPEP 2686.04
Reexamination and Litigation Proceedings

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2686.04    Reexamination and Litigation Proceedings [R-07.2015]

35 U.S.C. 314 Conduct of inter partes reexamination proceedings.

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[Editor Note: As in effect prior to September 16, 2012]

  • (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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[Editor Note: As in effect prior to September 16, 2012]

  • (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.

[Editor Note: As in effect prior to September 16, 2012]

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 C.F.R. 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 C.F.R. 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.

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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 that litigation is stayed for the purpose of reexamination, 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 one-month shortened statutory period for response rather than the two months usually set in reexamination proceedings. Response periods may be extended only upon a strong showing of sufficient cause (see MPEP § 2665). 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 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 such a 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 basis for reexamination exists will be made independently of the court’s decision on validity, since the decision is not controlling on the Office. See In re Swanson et al, 540 F.3d 1368, 1378 (Fed. Cir. 2008).
    • 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 or reasonable likelihood of prevailing 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 or reasonable likelihood of prevailing 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 upholding validity: The provisions of 35 U.S.C. 317(b) and 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. 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. See also subsection V. below.

    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 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 or if the answer to each of questions (1)-(3) is "yes" for all claims for which reexamination was requested in the proceeding, then the examiner should notify his or her SPRS, who will contact OPLA for further guidance. 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 or reasonable likelihood of prevailing 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/terminated 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 or reasonable likelihood of prevailing 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 validity of the claims. 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. 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. 398, 82 USPQ2d 1385 (2007).

Note also In re Swanson et al.,, 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) where the Federal Circuit held that the prior federal court judgment upholding validity over a specific prior art reference (in Abbott Labs. v. Syntron Bioreseach, Inc., 334 F.3d 1343 (Fed. Cir. 2003)), did not preclude the Office’s finding that a substantial new question of patentability existed as to the same claims based on the same prior art reference applied in the same manner in the subsequent ex parte reexamination proceeding, and did not preclude the Office’s finding that the patent claims were unpatentable.

Finally, see In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (patent reexamination should take notice of a court decision but the Office need not come to the same conclusion as the court).

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 three 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 U.S. 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 provides a qualification as to conducting reexamination with 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." [Emphasis added.]

35 U.S.C. 314 provides for special dispatch in inter partes reexamination "[u]nless otherwise provided by the Director for good cause." 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 an actual 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.

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 three 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, and (2) include a petition to suspend under 37 CFR 1.182.

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 parties are required to notify the Office of the final court decision. The reexamination proceeding is reviewed to see if no substantial new question of patentability remains or reasonable likelihood of prevailing remains (as to one or more claims) due to a holding that patent claims, which are under reexamination, are invalid. If the final court decision holds the claims to be not invalid, and if a party to the reexamination proceeding (such as, e.g., the patent owner) wishes the Office to terminate the proceeding pursuant to pre-AIA 35 U.S.C. 317(b), the party may notify the Office of the final court decision by filing a grantable petition under 37 CFR 1.182 to terminate prosecution of the claims under reexamination which were finally held to be not invalid, in accordance with the guidelines set forth in subsection V below.

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 if the Office is notified of the final court decision. The reexamination will continue as to any remaining claims. If all of the claims being examined are finally held invalid or unenforceable, and if the Office is notified of the final court decision, the reexamination will be vacated/terminated by the CRU Director as no longer containing a substantial new question of patentability or reasonable likelihood of prevailing. If not all claims being examined were held invalid, a substantial new question of patentability or reasonable likelihood of prevailing 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 Reexamined

Claims [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, J. Doe et al).

3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 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 validity holding if a grantable petition under 37 CFR 1.182 to terminate reexamination of those claims is filed in accordance with guidelines set forth in subsection V. If the provisions of 37 CFR 1.907(b) apply such that all of the claims in the reexamination proceeding cannot be maintained, 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, pre-AIA 35 U.S.C. 317. See 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 decision upholding validity and should continue the reexamination. The court noted that district courts and the Office use different standards of proof in determining invalidity and unpatentability, 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 decision upholding 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 upheld by the court may be rejected in reexamination.

V.    DISCUSSION OF EFFECT OF LITIGATION WHERE REQUESTER WAS A PARTY TO THE LITIGATION

A.    Termination Pursuant to Pre-AIA 35 U.S.C. 317

A party to a pending inter partes reexamination proceeding such as, e.g., the patent owner, may request the Office to terminate prosecution of patent claims under reexamination, which are finally held to be not invalid by a federal court, by filing a grantable petition under 37 CFR 1.182 to terminate prosecution of those claims, in accordance with the guidance set forth below.

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 pre-AIA 35 U.S.C. 317(b); pre-AIA 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," and not simply after a district court decision which is still pending on appeal. 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. 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.

Pre-AIA 35 U.S.C. 317(b) provides, in pertinent part:

"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]

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.

A grantable petition under 37 CFR 1.182 to terminate prosecution of claims under reexamination must provide evidence that the following requirements, which track the statutory requirements set forth in pre-AIA 35 U.S.C. 315(c), have been satisfied:

  • 1. The third party requester was a party to the litigation;
  • 2. The decision is final, i.e., after all appeals;
  • 3. The court decided that the requester/party had not sustained its burden of proving the invalidity of any claim in suit, which claim is also under reexamination; and
  • 4. The issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the civil action.

The evidence should include a copy of the district court decision, any jury verdict, any decision by the U.S. Court of Appeals for the Federal Circuit (CAFC), including any mandate, any dismissal of an appeal by the CAFC, and any ruling by the United States Supreme Court on a petition for certiorari. Submission of a copy of the district court’s docket is also recommended. The copy of the docket may provide evidence, for example, that no further appeal has been taken in the litigation, or if (and when) a trial has been held, where appropriate.

Regarding item no. 1, evidence that the third party requester was party to the litigation may be provided by filing a copy of the court decision or other court document which provides the name of the requester as, for example, a defendant in the litigation.

Regarding item no. 2, the petition must be accompanied by evidence that the decision is final, after all appeals. 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. Such evidence may include any decision by the CAFC, including any mandate, any dismissal of an appeal by the CAFC, any ruling by the United States Supreme Court on a petition for certiorari, and/or a copy of the district court’s docket.

Regarding item no. 3 above, the evidence must show which claims were before the court at the time of the court’s decision. A "claim in suit" is a claim that was before the court at the time of the court’s decision, and not merely a claim that was asserted at some point in the litigation. If a claim under reexamination was not the subject of the court’s decision, then the estoppel provisions of pre-AIA 35 U.S.C. 317(b) do not apply to the final outcome of the litigation as to that patent claim, because there is no "final decision that the party has not sustained its burden of proving the invalidity" of that patent claim. Thus, prosecution of the non-litigated claims would not be "terminated" in the reexamination proceeding.

Pre-AIA 35 U.S.C. 317(b) specifically requires a decision by the court that the requester "has not sustained its burden of providing the invalidity of any patent claim in suit" (emphasis added). The statute does not refer, for example, to any patent claim that "could have been" in suit. Pursuant to the statute, the patent claims that were before the court at the time of the court’s decision must initially be determined. Further, each claim that is determined to be "in suit," i.e., each claim that is determined to be before the court at the time of the court’s decision, must have a corresponding final decision of non-invalidity. Once the claims in suit have been identified and once the "final decision has been entered...," the statute then prohibits the Office from maintaining an inter partes reexamination "of any such patent claim" (i.e., the patent claim in suit), "on the basis of issues which... [the requester] raised or could have raised" in the litigation (emphasis added). Accordingly, the phrase "raised or could have raised" applies only to patent claims that were in suit and for which a final decision on non-invalidity has been entered. Thus, the issue is not whether the requester "could have raised" claims that were not in suit. Rather, once the claims that were actually before the court with respect to the issue of non-invalidity at the time of the court’s decision are determined, the issue is whether any issues raised in the reexamination proceeding with respect to those claims either were raised or could have been raised by the requester in the litigation.

Evidence showing which claims were before the court may include a copy of the jury verdict form, or any other court document which shows which claims were before the court at the time of the court’s decision. Also, where appropriate, a copy of the court’s docket may provide evidence, in combination with another court document such as a complaint and/or defendant’s answer, of which claims were before the court at the time of the court’s decision, by showing that the specific patent claims before the court at the time of the complaint and defendant’s answer have not been reduced or modified prior to the court’s decision.

Regarding item no. 4 above, the petitioner must sufficiently show that the issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the civil action. The last sentence of pre-AIA 35 U.S.C. 317(b) permits "the assertion of invalidity [by the requester] based on newly discovered prior art unavailable to the third party requester". See the legislative history of pre-AIA 35 U.S.C. 317(b), which provides the meaning of the word "unavailable", as it appears in the statute (emphasis added in bold):

Further, if a third-party requester asserts patent invalidity in a civil action and a final decision is entered that the party failed to prove the assertion of invalidity... after any appeals, that third-party requester cannot thereafter request inter partes reexamination on the basis of issues which were or which could have been raised. However, the third-party requester may assert invalidity based on newly discovered prior art unavailable at the time of the civil action or inter partes reexamination. Prior art was unavailable at the time if it was not known to the individuals who were involved in the civil action or inter partes reexamination proceeding on behalf of the third-party requester and the USPTO.

106 Cong. Rec. S14720, Nov. 17, 1999. See also 106 Cong. Rec. H11805, Nov. 9, 1999.

Thus, to show that a reference is "available", the patent owner must provide sufficient evidence that the reference was known to the requester (i.e., actual knowledge) at a time when it could have been raised in the civil action; such as, e.g., prior to any trial.

The petitioner may provide, for example, a discussion or comparison of the prior art raised in the reexamination proceeding and any prior art actually raised at trial. Any argument that the prior art was raised at trial must be accompanied by evidence such as, for example, a court document that lists the prior art raised, such as a copy of a jury verdict form. The petitioner may also provide evidence that the prior art raised in the reexamination proceeding could have been raised by the requester in the civil action by filing, for example, a copy of defendant’s invalidity contentions, which lists the prior art known to the requester before any trial began, and by comparing the prior art listed with the prior art raised in the reexamination proceeding.

B.    Suspension Pending Potential Termination Due to Litigation

Pre-AIA 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 pre-AIA 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, where the requester of the reexamination proceeding (or its privies) is also a party to the litigation, may provide the requisite statutory "good cause" for suspension, due to the possibility that the pre-AIA 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.

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." Pre-AIA 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 pre-AIA 35 U.S.C. 314(c).

A grant of a petition to suspend an inter partes reexamination proceeding pending potential termination due to litigation is extremely rare, due to the difficulty in determining the probability that the district court will, or will not, be reversed on appeal, or when the litigation might finally be concluded, after all appeals. Because the Office is required to conduct reexamination proceedings with special dispatch, inter partes reexamination proceedings are rarely suspended solely because there is a potential for termination due to pending litigation.

When determining whether there is "good cause" to suspend action in the reexamination based on pending litigation, the Office may consider the following elements:

  • 1. The third party requester is a party to the litigation.
  • 2. The claims at issue in the litigation are identical to the claims under reexamination. The pre-AIA 35 U.S.C. 317(b) estoppel applies only to patent claims that were litigated in the suit, i.e., claims that were before the court at the time of the court's decision (the litigated claims). If a claim under reexamination is not the subject of the litigation, then the estoppel provisions of pre-AIA 35 U.S.C. 317(b) would not apply to the final outcome of the litigation as to that patent claim. Indeed, there would be no "final decision that the party has not sustained its burden of proving the invalidity" of that patent claim. Thus, there is no "potential for termination" of this reexamination proceeding as to the non-litigated claims.
  • 3. The issue(s) raised in the reexamination proceeding are the same issue(s) that were raised or could have been raised by the requester in the litigation. The pre-AIA 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, or raised in the reexamination proceeding at a time when the new issues could also have been raised in the litigation.

    If new art is raised in the reexamination proceeding and was not raised in the litigation (civil action), and the art could not have been raised in the litigation, then estoppel does not attach. The patent owner has the burden of showing that the art applied in the request or later raised in the reexamination proceeding was available, i.e., known, to the third-party requester at a time when they could have been placed in the litigation, such as, e.g., prior to trial. See subsection V.A. above.

  • 4. The litigation has advanced to a late enough stage that there is a sufficient probability that a final decision will be adverse to the requester. The pre-AIA 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.
  • 5. There is 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), 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.

C.    Examples of Where this Estoppel Was 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. 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.