1. Greg Gardella Patent Reexamination: Effective Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings

2. 2 Interplay Between Reexam and Litigation When to File Reexam? Race to Judgment Admissions Collateral Estoppel

3. 3 When to File Reexam: Before the Lawsuit In conjunction with declaratory judgment action? Provides a strong argument for the court to grant a stay if litigation is later filed Less costly to contest patent via reexam versus litigation Can cast later suit as retaliatory Caveat: might provoke a lawsuit

4. 4 To maximize the chance of stay of litigation –Status of discovery and trial schedule often a key factor in decision to stay litigation To minimize the chance of preliminary injunction/TRO The first OA or ACP is likely to issue before trial When to File Reexam: Beginning of Lawsuit

5. 5 Reexam request may be easier to prepare after arguments are developed and prior art is searched during litigation The grant of a reexam may influence the trier of fact A pending reexam may be influential in post-trial proceedings, including permanent injunction motion When to File Reexam: Later in the Lawsuit

6. 6 After the lawsuit –May serve to terminate injunction, royalty obligation Multiple, staggered ex parte reexams –Each new reexam request can attempt to address alleged shortcomings of prior art considered in prior reexam –Tightening standards at the Central Reexamination Unit –Merger of co-pending reexaminations When to File Reexam: After Lawsuit; Multiple, Staggered Requests

7. 7 Delay in Filing Reexam Requests May Have Consequences Denial of relief from judgment on basis of disclaimer by plaintiff during reexamination of patent filed by defendant Defendant delayed in filing reexam request, waited till after trial to file reexam request –“Microsoft was not faultless in the delay [in filing reexamination petition] and justice does not require overturning a jury verdict at this late stage based on statements made to the PTO.” Amado v. Microsoft 517 F.3d 1353 (Fed. Cir. 2008)

8. 8 Interplay Between Reexam and Litigation When to File Reexam Race to Judgment Admissions Collateral Estoppel

9. 9 “A party can choose to run horses in both races, but the conclusion of one race automatically ends the other; a party cannot ride both horses to conclusion.” Sony v. Jon W. Dudas, No. 1:05CV1447, 2006 WL 1472462, at *6 (E.D. Va. May 22, 2006) Horse Race?

10. 10 In re Translogic DATELITIGATIONREEXAM March 1999Patentee sues June 1999 – Sept. 2002 Accused infringer files multiple reexam requests Oct. 2003Jury upholds patent validity March 2004PTO rejects claims May 2005Jury finds $86.5 million in damages July 2005BPAI affirms rejections December 2005District Court enters judgment

11. 11 In re Translogic: Federal Circuit Jury verdict nullified by reexamination: –Fed. Cir. affirms rejection in reexamination, holding patent claims as obvious (504 F.3d 1249) – Same day, the Fed. Cir. “vacates the district court's decision and remands this case to the district court for dismissal.” (250 Fed. Appx. 988) What if reexam decision occur after? May work to overturn permanent injunction. See, e.g., FRCP 60(b)(5)

12. 12 Interplay Between Reexam and Litigation When to File Reexam Race to Judgment Admissions Collateral Estoppel

13. 13 “Admission” by Patent Owner Examiner may rely on admissions Non-Final Holding of Invalidity or Validity “Not controlling” in reexam “Fact” determined in reexamination Requester may be estopped from challenging fact in litigation Actions During Proceedings LitigationInter Partes Reexamination Interplay Among Proceedings – A Lot Can Happen Non-final rejection Persuasive authority for invalidity Ongoing prosecution history: Patentee argues distinction over prior art May impact claim interpretation or provide basis for non-infringement position Claim amendments May limit damages or create intervening rights

14. 14 Final Holdings LitigationInter Partes Reexamination Interplay Among Proceedings – A Lot Can Happen Invalid Reexam is vacated (as moot) “Valid” Reexam is vacated if the requester was a litigant Requester estopped from asserting invalidity in litigation based on reexam prior art Case dismissed Final decision holding patent: Invalid “Valid” A decision is “final” only after all appeals.

15. 15 Interplay Between Reexam and Litigation When to File Reexam Race to Judgment Admissions Collateral Estoppel

16. 16 Estoppel In Ex Parte Reexam: Via Court Order Some orders staying litigation are expressly conditioned on an estoppel provision: –“[S]tay would be granted only on the condition that each Defendant agree not to challenge the ‘961 patent based on any prior art printed publications that were considered during the reexamination process.” Antor Media Corp. v. Nokia, 2:05CV186 (E.D. Tex., Oct. 23, 2006) (J. Folsom)

17. 17 “Practical” Collateral Estoppel When patent survives reexamination the trier of fact is likely to indulge a strong presumption that the patent is in fact valid This bias can apply even when defenses could not have been raised during reexamination –Offers for sale –Prior invention

18. Greg Gardella Patent Reexamination: Effective Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings