Patent Reexamination: Best Practices for Pursuing and Defending Parallel Reexamination and Litigation

2 The Stats PTO Fiscal Quarter Proceedings

3 Ex Parte Requests with Related Litigation FY 2004FY 2009 Inter Partes Requests with Related Litigation FY 2004FY 2009 The Stats

4 2009Through 2008 Ex Parte Stats

5 2009Through 2008 Inter Partes Stats

Ex Parte Ex Parte v. Inter Partes 2009 Inter Partes

7 % Stays Granted (Cases Reported January April 2010) 38.9% Was 34% 61.8% Was 68% 51.7% Was 39.1% 63.6% was 50% Stays

8 Safoco v. Cameron No. 4:05cv00739, 2009 WL (S.D.Tex. 2009) “ Based on the authorities cited by Cameron, the court concludes that a patent claim is not ‘finally determined to be valid and patentable,’ 35 U.S.C. § 315(c), in an inter partes reexamination proceeding until the USPTO issues a reexamination certificate” Certificate issues after Article III appeals exhausted

9 In re Translogic Technology 504 F.3d 1249 (Fed.Cir. 2007) Reexamination can nullify verdict Both cases were on appeal at the same time Fed Cir affirmed reexam and remanded district court case for dismissal If reexam appealed later, would injunction be lifted?

10 In re Swanson 540 F.3d 1368 (Fed.Cir. 2008) Office may consider during reexamination the same issue of validity as a prior federal court case Reexam requests now often filed late in the case as “second bite” –Lift injunction? –Nullify ongoing royalties?

11 Amado v. Microsoft 517 F.3d 1353 (Fed.Cir. 2008) Denial of relief from judgment on basis of disclaimer by plaintiff during reexamination of patent filed by defendant Precedent requires defendant to be “faultless in the delay” Defendant delayed in filing reexam request, waited till after trial to file reexam request

12 Don’t try to tell your litigation story Examiners sometimes use narrower construction than courts How exactly would references be combined by a POSITA? 132 declarations In an IPR, get your art in early (R.948) Recent Lessons from the Front

13 Amended S.515 changes IPR into 1 year proceeding before APJ First window only Estoppel provision back in Applies to all patents Legislation