Judge Acknowledges Shift of “Validity Issue” to PTO in Staying Court Case

Scott Daniels | October 19, 2010

Judge Larry Alan Burns of the Southern District of California has stayed the case DJO v. VitalWear, pending completion by the PTO of reexaminations of the two patents-in-suit.  He applied the traditional three-part test for considering such stays – the stage of the litigation, possible prejudice to the patentee, and potential for simplification of the issues.  It was Judge Burns’ comments on the issue of simplification, however, that were noteworthy.

First, he found that no one “can predict which claims, if any, will be cancelled, which will be amended, and which will emerge unscathed.”  Accordingly, any litigation of the patents now would “likely be duplicative” of the reexamination proceedings.

More significantly, Judge Burns held that the patentee’s assertions (1) that the prior art cited in the reexamination proceedings is cumulative over the art cited in the original prosecution and (2) that the accused products would infringe any narrowed claims, “are precisely the types of disputes that the PTO is better equipped to resolve” than a trial court (emphasis added). He then explicitly stated that “shifting the patent validity issue to the PTO has many advantages.”

We are uncertain what Judge Burns meant when he implied that the PTO might resolve certain infringement issues.  What is important, though, is his frank acknowledgement that issues related to the meaning of patent claims, the disclosure of prior art, and patent validity should be shifted from the courts to the PTO.  These comments reflect a change in attitude among trials judges toward patent reexamination, portending a significant change in the forum where patents issues will be decided in future.

Judge Burns indicated, however, that he is sensitive to the time required for reexamination by advising the parties that he might resume the litigation if by November 11, 2011, the reexamination proceedings “show no signs of concluding.”

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