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JULY/AUGUST 2009 VOLUME 15 NUMBER 4 DEVOTED TO INTELLECTUAL PROPERTY LITIGATION & ENFORCEMENT Litigator Edited by the Law Firm of Grimes & Battersby The USPTO as a Forum for Resolving Intellectual Property Disputes Artem N.

SLIDE 1 JULY/AUGUST 2009 VOLUME 15 NUMBER 4

DEVOTED TO INTELLECTUAL PROPERTY LITIGATION & ENFORCEMENT

Edited by the Law Firm of Grimes & Battersby

Litigator

SLIDE 2 JULY/AUGUST 2009 I P L i t i g a t o r 1 Artem N. Sokolov, asokolov@sughrue.com, is an attorney at Sughrue Mion PLLC ( www. sughrue.com ). Mr. Sokolov practices in all areas

f Intellectual Property law with an emphasis on

litigation of intellectual property matters as well as reexamination and interference practice. His practice also includes the preparation and prosecution of patent applications in the electrical and mechanical arts, and rendering opinions on patentability, validity, and infringement. Mr. Sokolov is fluent in Russian. Travis B. Ribar, TRibar@Sughrue.com, is an attorney at Sughrue Mion PLLC ( www.sughrue. com ). He has represented clients in interferences and in both ex parte and inter partes reexamination

proceedings. Mr. Ribar also has been able to use

his background as a Patent Examiner in his patent prosecution work, which focuses on the chemical arts. It is Friday afternoon and you are the Intellectual Property counsel for a company whose next big product is only weeks away from launch. But on this day, you come across a patent that may throw a wrench into those plans—a patent that may cover the next big product. Once you launch, a lawsuit is sure to follow. So what are your options? Is there anything you can do to favorably position your company in the weeks ahead? Of course, if sued, the district court is one option. But this path is costly, uncertain and there is a possibility that your competitor will seek an injunction against your next big product. On the other hand, by taking advantage of procedures available at the US Patent and Trademark Office (PTO), you could potentially resolve the dispute in a cost-efficient manner or even prevent a lawsuit from being filed. This is good news. Historically, the PTO has been thought of as the place to obtain a patent, while patent disputes were handled by district courts. Such is no longer the case. At the PTO you can request reexamination of the potentially problematic

patent. When filed early, a reexamination could delay or

even prevent a lawsuit, or may at least provide a basis for requesting a stay or contesting a request by your competitor for injunctive relief. Reexamination requests are granted in almost 95 percent of all cases, so this option should not be overlooked. Likewise, in certain scenarios an interference could turn the potentially problematic patent against your competitor. This article reviews reexamination and interference proceedings as a tool for resolving patent disputes, including the cost and risk considerations, discusses the associated timing requirements and provides some strategic considerations for pursuing these options.

Requesting Reexamination

f a Patent

One option is to request reexamination of the potentially problematic patent. Reexamination is a process by which a person (the Requestor) can request for the PTO to reevaluate the patentability of the claims of a granted

patent. By and large, reexamination provides a low-cost,

effective approach for resolving patent disputes. As such, it is no secret that the popularity of reexamination procedures is on the rise in recent years. 1 By statute, reexamination of an issued patent can only be requested on the basis of prior patents or printed publications. 2 This means, for example, that if someone is aware of an article or patent which may anticipate

r render obvious the claims of an issued patent, they

may request that the PTO reconsider the issued patent. To be clear, grounds for requesting reexamination are limited to prior patent or publications. Other grounds

f invalidity, such as prior sale, inequitable conduct, or

issues under 35 U.S.C. § 112 cannot form the basis of a reexamination request. A request for reexamination will be granted if the patents or printed publications raise a “substantial new question of patentability” (SNQP) as to the claims at

issue. The good news for Requestors is that this standard

is not particularly high. In fact, the grant rate for ex parte reexaminations is 92 percent, while for inter partes , this number climbs even higher, to 95 percent. 3 Accordingly, the option of pursuing a reexamination is almost always

n the table, and is almost always worth a second look.

Also good news for Requestors is that prior art that was considered during the examination of the patent at issue may still form the basis for a request for reexamination. In particular, previously considered art can form the basis for a reexamination if applied to the claims of the

The USPTO as a Forum for Resolving Intellectual Property Disputes

Artem N. Sokolov and Travis B. Ribar

SLIDE 3 2 I P L i t i g a t o r JULY/AUGUST 2009 patent in a manner different from how it was cited during the original examination. There are two options to choose from when pursuing a reexamination: (1) inter partes reexamination, and (2) ex parte reexamination. Inter partes reexamination allows the Requestor to remain substantially involved through-

ut the reexamination process. In contrast,

ex parte reexamination is limited to the patent owner and the PTO. The Requestor will not participate.

Inter Partes versus Ex Parte Reexamination

The active role of a Requestor in an inter partes reexamination makes this procedure a powerful tool for

pposing a patent.

4 In inter partes reexamination, both the Requestor and the patent owner have substantive participation rights, including during appeal. 5 For example, when a patent owner responds to the Examiner’s Office Action, the Requestor is afforded an opportunity to comment on the patent owner’s response. The Exam- iner can consider this response in preparing the next Office Action. For Requestors, this ability to participate in the reexamination process greatly mitigates the risk that an Examiner will be improperly persuaded by the patent

wner. Another important benefit of

inter partes reexamination is that the patent owner is not allowed to interview the Examiner. Rather, any arguments that the patent owner makes in an inter partes reexamination must be by way of a written response to the PTO. These benefits are reflected in the statistics, which show that in 93 percent of the inter partes reexaminations, claims are either canceled or at least amended. 6 Yet, for Requestors, the benefits of inter partes reexamination do not come without a cost. As an initial matter, because the Requestor is substantively involved in the reexamination process, inter partes reexamination is typically more expensive than an ex parte reexami-

nation. However, this cost is nowhere near the cost of

litigation, which can be in the millions of dollars. Also

f concern is the preclusion effect associated with

inter partes

reexamination. That is, in

inter partes reexamination, the Requestor only gets one bite at the apple as the estoppel provision of inter partes reexamination pre- cludes the Requestor from raising in subsequent reexamination or civil litigation any issue that was raised or could have been raised during an inter partes reexamination. 7 Likewise, any issue that was raised, or that could have been raised during litigation cannot be taken up by those parties in inter partes reexamination. 8 Although the courts have not yet settled exactly on “what could have been raised” during reexamination encompasses, it is clear that any issue actually raised during an inter partes reexamination cannot be relied upon in future reexamination proceedings or as a defense in future litigation. By contrast, the role of the Requestor is limited in an ex parte reexamination, unless the Requestor is also the patent owner. That is, a Requestor in an ex parte reexamination will not be able to participate in the process, other than to file the request. 9 Indeed, an ex parte reexamination proceeds in much the same manner as the examination of a patent application—examination is limited to an applicant (the patent owner in a reexamination) and an Examiner, with no comments permitted by

utside parties.

Ex parte reexamination is the more widely used reexamination process, not only because of its relative ease and low cost, but also because a Requestor is allowed to file multiple ex parte reexamination requests. For example, if a first ex parte reexamination does not produce the desired results, it is not uncommon for a Requestor to file an additional ex parte

request. In each instance, the

Requestor’s costs are mostly limited to the costs associated with the filing of the request for reexamination. However, ex parte reexamination does carry some risk for Requestors. Because the Requestor is not permitted to actively participate in the proceedings, it is possible that the Examiner will “miss the boat,” so to speak, and allow the claims despite there being convincing arguments against patentability. Lack of participation by the Requestor results in a less contentious setting for the determination of patentability. The patent owner also has an advantage in ex parte reexamination in that personal interviews with the Examiner are permitted. Because the proceeding is ex parte , the patent owner is permitted, and typically will conduct an interview with the Examiner. Although the substance

f the interview will be made of record, the details of

the discussion will not. By limiting the record, the patent owner reduces the potential for creating damaging prosecution history.

Issues to Consider When Filing a Request for Reexamination

Reexamination may be a particularly attractive option, if in addition to prior patents and printed publications used in the reexamination, additional infringement or invalidity defenses are available. Because those defenses cannot be raised in a reexamination, they may form a fallback position for use in district court, should the reexamination fail to resolve the patent dispute. For example, if strong evidence exists that the “invention” was on-sale or in public use one year prior to the patent’s filing date, those are defenses that cannot be raised in a reexamination, but may be saved for use in civil litiga-

tion. Likewise, additional defenses may be available such

as invalidity under 35 U.S.C. § 112 or inequitable conduct

SLIDE 4 JULY/AUGUST 2009 I P L i t i g a t o r 3 may be used in civil litigation, but are not available for use in a request for reexamination. Because only prior patents and printed publications are addressed during reexamination, if any additional defenses exist, then reexamination may be an appealing option. Similarly, a reexamination may be used to create prosecution history that will limit the scope of any surviving

claims. A company concerned about how claims may

be interpreted during future litigation may utilize the reexamination process to provoke the patent owner into defining the scope of its claims more clearly or more nar- rowly through amendments or arguments. For example, representations made during reexamination may prevent the patent owner from expanding the breadth of patent rights during litigation. Another point to consider relates to the presumption of validity associated with an issued patent. When asserted in district court, the claims of an issued patent are presumed to be valid in view of 35 U.S.C. § 282, and the party challenging validity of the patent has the burden

f proving invalidity by clear and convincing evidence.

Not so during reexamination. In fact, once the Requestor establishes a substantial new question of patentability with respect to the claims, the presumption of validity no longer applies. 10 The Requestor therefore has a significantly lower threshold at the PTO than in civil litigation. Furthermore, during reexamination, the USPTO will not construe the claims, in contrast to a district court

proceeding. Instead, once reexamination is granted, the

claims at issue must be given “the broadest reasonable interpretation consistent with the specification”—the same standard as applied during the prosecution of any application at the PTO. 11 When following the broadest reasonable interpretation of the claims, the Examiner in a reexamination may apply a broader range of prior art to the claims at issue than would a district court. This then increases the likelihood that the claims of the patent will be rejected by the Examiner. The PTO as a forum for resolving patent disputes is also drastically different from a district court, and may provide a more receptive forum for considering invalidity positions. In district court, factual validity issues likely will be presented to a jury. In many cases, the trial provides the jurors their first experience with the patent system, and possibly their first experience with the technology at issue. By contrast, a patent in reexamination is assigned to an experienced Examiner who is likely to be familiar with the technology at issue. In fact, the PTO has recognized the special importance of reexamination proceedings and created the Central Reexamination Unit (CRU), consisting of experienced senior Examin- ers, solely for the purpose of handling reexaminations. This unit is further broken down by technology to ensure that the most qualified Examiner will handle the reexamination proceedings. The Examiner’s experience and technical savvy may be particularly relevant when the technology at issue is complex. Another factor to consider is the Examiner’s experience in reviewing claims and applying prior art to those

claims. Examiners in the CRU are intimately familiar

with PTO practice and procedure, and have examined thousands of claims during their careers. The Examiners are familiar with the concepts and laws of patentability. A similarly educated person is unlikely to be selected to sit on a jury. The statistics behind reexamination appear to favor the

Requestors. Recently released statistics from the PTO

show that in ex parte reexaminations, all of the patent’s claims were canceled in 13 percent of the cases, and in another 60 percent of the cases the claims were amended as a condition of patentability. Predictably, the numbers are even more favorable for Requestors in inter partes reexaminations, where 73 percent of cases resulted in all claims being canceled, with an additional 20 percent of cases where the claims were amended. In only 7 percent

inter partes reexaminations were all claims confirmed ( i.e. , they emerged from the reexamination unchanged). 12 Even so, for cases where all claims were confirmed, the statistics do not reflect issues such as whether the scope

f the claims was altered by the prosecution history

created during the reexamination. Another reason that reexamination may be appealing is because of the pressure it places on the patentee. There is no continuation practice in reexamination, which means that unlike regular prosecution, patent

wners will not be able to slowly feel out the Examiner’s

position with a Request for Continued Examination in their back pocket. Instead, the opportunity to add or amend claims, and present arguments, is limited. This puts the patent owner under significant pressure to immediately amend or argue the patentability of at least some of the claims. Not all is lost for the patent owner, however. Once the patent enters reexamination, a patent owner is free to amend its claims or to add new claims, provided that the amended or new claims do not broaden the scope of the

riginally granted claims. This could conceivably give a

patent owner the opportunity to present new claims written specifically to cover a particular product, to the extent these claims can be supported by the specification. Finally, Requestors should consider that once a reexamination is declared, the patent owner’s duty of disclosure is triggered. As a result, patent owners have a responsi- bility to identify and produce any relevant prior art that they have become aware of since the patent issued from the PTO. In certain cases the burden is substantial, as a large number of references may need to be reviewed and could create a potential pitfall for inequitable conduct.

SLIDE 5 4 I P L i t i g a t o r JULY/AUGUST 2009

What Is the Benefit of Requesting Reexamination?

In the hypothetical above, the IP counsel identified the potentially problematic patent before a lawsuit was

filed. If a lawsuit is likely, early identification provides

an opportunity for a preemptive strike against the patent. In particular, reexamination should be strongly considered when a company may be liable for a large amount in past damages. Here, reexamination can provide an enormous benefit to a third party Requestor. That is, if a claim at issue in the reexamination is found to have changed in scope, the third party Requestor is eligible for intervening rights. 13 There are two types of intervening rights: absolute intervening rights and equitable intervening rights. Absolute intervening rights prevent the patent owner from obtaining any damages for events that occurred before the patent was reexamined. 14 In

ther words, the third party Requestor would not be

liable for any past damages. Equitable intervening rights may allow the third party Requestor to avoid even future damages. It is important to note that intervening rights are not available for claims which survive reexamination without amendment, or those whose scope remains unchanged. 15 But, as discussed above, ex parte reexaminations result in claims being canceled 13 percent of the time and amended 60 percent of the time. With respect to inter partes reexaminations, 73 percent of cases resulted in all claims being canceled and an additional 20 percent of cases resulted in claims that were amended. As a result, there is a significant potential for a party to obtain intervening rights through a reexamination. A preemptive strike on the potentially adverse patent also provides time for the third party Requestor to design around the claims of the potentially adverse patent. An effective redesign, coupled with the possibility of intervening rights may significantly reduce, or eliminate damages altogether. With reduced damages, your competitor may no longer have any incentive to pursue a lawsuit—a welcome scenario for the IP counsel. Preemptively placing a potentially adverse patent into reexamination may also increase the leverage for the third party Requestor in a licensing negotiation. For example, the cloud of a reexamination proceeding may reduce the value of the patent. But, even if a reexamination is not requested prior to licensing negotiations, identifying potentially invalidating prior art may increase the leverage of your company during negotiations. Preparing a request for reexamination includes, for example, commissioning a prior art search, which alone can take several weeks. The search will not only identify prior patents and publications early on, but also will serve as an early evaluation of the strengths and weaknesses of your case. Accordingly, even if reexamination is ultimately not the option of choice, the preparation necessary to submit a request for reexamination will certainly come in handy going forward. But what if the patent is not discovered until it is too late? What if your first notice of the patent is the lawsuit. A timely request for reexamination can be a very powerful tool early on in the litigation. Most notably, an early request for reexamination may provide the basis for requesting a stay in district court. 16 Likewise, reexamination can also be used to “alter the balance” in a determination of whether preliminary relief is warranted. For example, the PTO’s decision to reexamine a patent could call into question the likelihood of success on the merits. Again, because recent statistics show that between 92 percent and 95 percent of all reexamination requests are granted, this may be an attractive option. A stay in a litigation has many benefits for a defendant, including, for example, buying time to design around the claims of a patent, controlling costs, providing more time to search for additional prior art or establish additional defenses. It should be noted, however, that in district court, each claim of a patent is presumed valid under 35 U.S.C. § 282, and the claims of the patent may be enforced even if there is a pending reexamination proceeding at the PTO. 17 Nevertheless, if a stay is granted, the patent owner/ plaintiff is placed into a very uncomfortable position. That is, the patent owner/plaintiff began as an aggres- sor, enforcing a patent against a competitor. But yet, the lawsuit is on the sideline, while the patent owner has to defend its own patent in a forum that provides little advantage to the patent owner. At the PTO, no presumption of validity exists. Likewise, instead of a clear and convincing standard, each claim is examined using “the broadest reasonable interpretation.” Last, the patent is before an Examiner familiar with the technology, and

ne who is familiar with the patent process. Needless to

say, this is not the result the patent owner/plaintiff had in mind when the lawsuit was filed. Although the majority of this section has been devoted to the advantages that third party Requestors enjoy in reexaminations, a reexamination requested by the patent owner also could provide unique advantages. For example, the patent owner can request reexamination to strengthen the patent over potentially problematic prior

art. Filing the request on its own allows the patent owner

to control the process. This tactic is sometimes known as “gold-plating” the patent. Furthermore, once a reexamination is granted, the patent owner can take the opportunity to cure any inequitable conduct issues raised by the defendant (or known to the patent owner) and also address any potential Section 112 problems.

SLIDE 6 JULY/AUGUST 2009 I P L i t i g a t o r 5

Pursuing an Interference at the PTO

An interference is another PTO procedure that may succesfully and cost-effectively address a brewing patent dispute. While only available under certain circum- stances, an interference is a powerful tool to turn a potentially problematic patent or application against your competitor. In the the scenario described above, a patent threatens to put an end to a company’s plans to market and sell its next big product. For the purpose of this discussion, the threat may be a patent, or a competitor’s application that is about to issue. An initial inquiry is whether the next big product is covered by the company’s own patents or

applications. If so, an interference may be possible. But
ne must move quickly to preserve the right to an inter-

ference, as the time to do so is limited. Briefly, if successful in an interference, a company may take ownership of the claims at issue, and can assert those claims against a competitor. In the litigation con- text, an interference may form the basis for requesting a stay, or alternatively could influence a decision regarding preliminary relief, such as an injunction.

What Is an Interference?

In the United States the right to a patent belongs to the first person to invent the subject matter—known as a first-to-invent system. Accordingly, in the United States, if the requirements of inventorship are met, the first party to invent will be entitled to a patent even if someone else is the first to file a patent application claim- ing the same invention. The US patent system allows the first-in-time inventor (Inventor) to challenge the patent rights of the first-to-file party (Applicant) via an interference. 18 In short, an interference is a priority contest under 35 U.S.C. § 135(a) to determine who was the first to invent. An interference can be declared between an application and another application or between an application and a patent. 19 As set forth in Section 2300 of the MPEP, “an interference is declared to assist the Director of the United States Patent and Trademark Office in determining priority, that is, which party first invented the commonly claimed invention within the meaning of 35 U.S.C. § 102(g)(1).” One thing to keep in mind, however, is that before an interference between two applications will be declared, the PTO must first determine that an Applicant’s application would issue as a patent but-for the possible prior inventive activity of the Inventor. 20 Under 37 C.F.R. § 41.202(a)(3), which defines interfering subject matter, “[a]n interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” This is a two-way test. That is, at least one claim of the Inventor’s application must anticipate or render obvious at least

ne claim of the Applicant’s application or patent. Like-

wise, at least one claim of the Applicant’s application

r patent must anticipate or render obvious at least one

claim of the Inventor’s application. If this test is met, interfering subject matter exists. 21

Preserving Your Right to an Interference

In order to keep the interference option on the table, an understanding of a company’s patent portfolio is

essential. Without this understanding, potentially inter-

fering subject matter may be overlooked. Also essential is due diligence in identifying newly issued patents (and newly published applications) that may be relevant to the company’s products as early as possible. This is necessary because as an Inventor, time is not on your side in preserving the right to pursue an interference. Specifically, there is a one year statutory limit during which the right to pursue an interference must be pre-

served. This limit is defined by 35 U.S.C. §§ 135(b)(1) and

135(b)(2). Section 135(b)(1) pertains to cases where the interfering subject matter is found in patents, and states: A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted . In other words, if attempting to provoke an interference with an issued patent, the potentially interfering claim must be filed within one year from the date of issuance of the patent. However, rights to pursue an interference may be lost even before the patent issues. Section 135(b)(2) pertains to cases where the interfering subject matter is found in published patent applications, and states: A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published

nly if the claim is made

before 1 year after the date on which the application is published . That is, the one year date begins to run with respect to the claims of an application as soon as the application is published. A word of clarification is necessary. Although the one year clock for the purpose of 35 U.S.C. § 135(b)(2) begins to run as of the date of publication

f the application, if the claims of that application are

SLIDE 7 6 I P L i t i g a t o r JULY/AUGUST 2009 amended during prosecution after being published, the clock may be reset pending re-publication or issuance. The standard for resetting the clock is whether the amendment to the claims was “material.” 22 The purpose of this article is not to explain interference practice in detail however. Instead, the purpose is to make sure that your company can preserve every right available to address a potentially problematic patent or

application. Preserving the right to pursue an interfer-

ence provides additional options down the road should an intellectual property dispute arise. In view of the above limits for pursuing an interference, early identification of potentially relevant patents or applications is crucial. Once identified, the claims should be reviewed to determine whether potentially interfering subject matter exists. Historically, an applicant provoked an interference by copying a claim from the relevant application or patent. However, when copying claims,

ne must be mindful that the copied claims will be inter-

preted in light of the specification into which they are

copied. Thus, even claims with identical language may

not interfere. This issue is particularly noteworthy with regard to means-plus-function claims, as these claims are limited to the structure recited in the specification and their equivalents. Another approach is to “add (or amend to create) a fully supported claim and then explain why, despite any apparent differences, the claims define the same invention.” 23 Regardless of which approach your company prefers, an issue that will need to be addressed, and one that substantial time should be dedicated to, is the issue of written description. You can be sure written description will be a key issue at the outset of any interference. In fact, the rules highlight written description, inter alia , as a “Threshold Issue” to be resolved at the outset of the interference. 24 This is particularly true when claims are copied from the target patent or application. Under 37 C.F.R. § 41.202, an Inventor who suggests an interference must “provide a claim chart showing the written description for each claim in the [Inventor’s] specification” in cases where “a claim has been added or amended to provoke an interference.” However, if the threshold is met, an interference should be declared. In practice, when faced with interference issues, the PTO will want to make sure that only a single patent for a single invention is issued, and that the patent is issued to the proper inventor. Beyond due diligence, your company can significantly improve its chances of a favorable outcome in an interference by filing complete and detailed patent applications as early as possible. 25 As discussed above, an Inventor can provoke an interference by copying a claim (or claims) from the relevant application or

patent. If

the claim is copied into an application that has an earlier priority date than that of the target application, the chances for success are greatly increased. The party with the earlier filing date in an interference is considered the “Senior Party.” 26 Ability to get senior party status in an interference is often indicative of success. In fact, statistics show that the senior party in an interference receives a favorable decision 70 percent of the time. 27

Why Preserve the Right to an Interference?

So why would a client want to take the necessary steps to preserve their right to an interference? How can an interference help favorably position your company in a patent dispute? To begin, the cost of an interference is significantly lower than litigation. The 2007 AIPLA Report of the Economic Survey indicates that an average cost of an interference (inclusive of all costs) is $450,000 dollars. By contrast, the average cost of a litigation (inclusive of all costs) is $2.5 million when $1–25 million are at stake. This figure jumps to an average of $5 million when more than $25 million is at stake. 28 Moreover, if successful in an interference, the result may very well be that your company will own the subject

claims. In many cases, companies draft claims to cover

the very products they are developing, and argue during prosecution that those claims are allowable over the art

f record. Victory in an interference could result in those

claims being transferred to the winner, a likely competitor in the market of the original party to file the application. Taking ownership of these claims provides an incredibly powerful position for negotiation. Accordingly, many times the losing party of the interference takes a license under the very claims they attempted to patent. Another important consideration is the preclusive effect that attaches to the loser of an interference. Spe- cifically, the “losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the subject matter of the lost count.” 29 Thus, victory in an interference can have a ripple effect throughout your competitor’s portfolio. Another issue to consider is the duration of an inter-

ference. If an interference is declared before the compet-

itor’s application can issue into a patent, no patent will issue from that application until judicial review of the interference is terminated. While the average duration of an interference is approximately two years, if appealed, an interference could last as long as five years. If the area

f technology is one where the shelf life of a product

is only a few years, the application may no longer be relevant to any product by the time the interference has concluded.

SLIDE 8 JULY/AUGUST 2009 I P L i t i g a t o r 7 1. 2008 US Patent and Trademark Office Performance and Accountability Rep., Tables 13a, 13b, available athttp://www.uspto.gov/web/offices/com/ annual/2008/oai_05_wlt_00.html . 2. See 35 U.S.C. § 301 (2006). 3. US Patent and Trademark Office, Ex Parte and Inter Partes Reexamination Historical Statistics (Mar. 31, 2009) available athttp://www.uspto.gov/web/ patents/cru.html . 4. Inter partes reexamination is limited to US Patents issued from an original application filed on or after November 29, 1999. 5. See Manual of Patent Examining Procedure (MPEP) § 2609 (Edition 8, Rev. July 2008). 6. United States Patent and Trademark Office, Ex Parte and Inter Partes Reex- amination Historical Statistics (Mar. 31, 2009) available athttp://www.uspto. gov/web/patents/cru.html . 7. 35 U.S.C. § 317(b) (2006). 8. Id. 9. See MPEP § 2209 (Edition 8, Rev. July 2008).

10. In re Etter, 756 F.2d 852 (Fed. Cir. 1985).

11. See MPEP § 2258(G) ; see also In re Yamamoto, 740 F .2d 1569 (Fed. Cir. 1984).

12. US Patent and Trademark Office,

Ex Parte and Inter Partes Reexamination Historical Statistics (Mar. 31, 2009) available athttp://www.uspto.gov/web/ patents/cru.html . 13 See 35 U.S.C. § 252 (2006), which states, inter alia , that: A reissued patent shall not abridge or affect the right of any person

r that person’s successors in business who, prior to the grant of a

reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to

thers to be used, offered for sale, or sold, the specific thing so made,

purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim

f the reissued patent which was in the original patent.

The rights detailed in 35 U.S.C. § 252, reproduced above, apply equally in reexamination and reissue situations. See 35 U.S.C. § 307 (2006).

14. Shockley v. Arcan, 248 F.3d 1349, 1360 (Fed. Cir. 2001) (a product “qualifies

for absolute intervening rights only if in existence at the time of reissue”).

15. 35 U.S.C. § 252 (2006).
16. It should be noted that certain jurisdictions are more likely than others to

stay a litigation pending the outcome of reexamination. Thus, the jurisdic- tion should also be taken into account when determining whether to file a reexam request. 17. See Ethicon v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988) (“[c]hallenging validity in a court and requesting PTO reexamination ‘are concepts not in conflict.’”) ( quoting In re Etter, 756 F.2d 852, 857, (Fed. Cir. 1985) (en banc)).

18. Assuming that the invention has not been abandoned, suppressed, or con-

cealed by the first-in-time inventor.

19. This includes reissue applications. In contrast, a determination of first inven-

tion between two issued patents is made by a court.

20. This is because the original claims may be amended during prosecution, and

may no longer be directed to interfering subject matter.

21. When an interference is declared, there is a description of the interfering

subject matter, which is called a “count.” Under 37 C.F.R. § 41.207(b)(2), “[a] claim corresponds to a count if the subject matter of the count, treated as prior art to the claim, would have anticipated or rendered obvious the subject matter of the claim.” Claim correspondence is thus determined using a one-way (anticipation/obviousness) test, and a party’s claims may properly be designated as corresponding to a count, even though they may not each interfere with a claim of an opponent. 22. See, e.g. , Regents of the Univ. of Cal. v. Univ. of Iowa Research Found . , 455 F.3d 1371, 1374 (Fed. Cir. 2006).

23. MPEP § 2304.02(d) (

citing 37 C.F.R. § 41.203(a) (2008)). 24. See MPEP § 2304.02(d).

25. This approach may differ depending on the technology involved.
26. 37 C.F.R. §§ 41.201 and 41.207 (2008).
27. Statement of Former Commissioner Hon. Gerald J. Mossinghoff, presented

to the PTO Roundtable Meeting on Small Business Views on the Interna- tional Harmonization of Patent Laws (Dec. 19, 2002).

28. 2007 AIPLA Report of the Economic Survey, at 26,

available athttp://www. aipla.org .

29. In re Deckler, 977 F.2d 1449 (Fed. Cir. 1992); 37 C.F.R. § 41.127.

By the same token, if an interference is declared with respect to a patent, the likelihood of receiving a stay in a litigation would be increased. Likewise, an interference may be used to reduce the likelihood of injunctive relief being granted. In the end, even when the above options are ultimately not employed, early recognition of relevant patents or applications decreases the costs of designing around, licensing, or abandoning the market. The result is a business advantage to the client that should not be discounted. Reprinted from IP Litigator July/August 2009, Volume 15, Number 4, pages 30-36, with permission from Aspen Publishers, Inc., Wolters Kluwer Law & Business, New York, NY , 1-800-638-8437, www.aspenpublishers.com