Reexamination Files Admitted for Issues of Willfulness, Estoppel & Inequitable Conduct, but not Validity

Scott Daniels | November 18, 2010

Last week, Tesco won its trial in Texas against Weatherford Int’l and several tool companies with a jury verdict that Defendants had infringed at least some valid claims of Tesco’s two patents – U.S. Patent Nos. 7,140,443 & 7,377,324 – related to drilling rig pipes.  What interests us, however, is Judge Keith Ellison’s pre-trial order granting in-part/denying in-part Defendants’ motion to strike “as summary judgment evidence” the PTO files for the reexamination of those two patents.

Prior to consideration of a series of summary judgment motions, Judge Ellison found that “the examiner’s rejections and confirmations of claims in the reexamination proceedings are inadmissible for purposes of proving invalidity of patents at the summary judgment stage.”  He explained that PTO examiners follow standards different from those applied by the courts because the statutory presumption of validity and the requirement of clear and convincing evidence are not followed in reexamination. Accordingly, the examiner’s conclusions regarding validity “have no probative value.”  Judge Ellison added that even if that they had some probative value, that value would be outweighed by the “serious risk that a jury would view the examiners as expert and authoritative.” 

On the other hand, Judge Ellison found that the reexamination files would be relevant to the issue of willful infringement.  Also, “information from the reexamination proceedings other than 1) the fact that reexamination was opened, or 2) the conclusions of the examiner – for example, what evidence Tesco made – is relevant to issue such as prosecution history estoppel and inequitable conduct.”  Where the conclusions of the examiners are not offered, there is no risk of prejudice from confusion between the different standards in court and in reexamination, Judge Ellison concluded. 

A complication for Judge Ellison is the fact that the Tesco claims found by the jury to be valid and infringed, claims 27 and 55 of the ‘443 patent and claim 14 of the ‘324 patent, have now been rejected by the reexamination examiners.  The rejection of the ‘443 patent claims is now on appeal to the Board, and the examiner in the ‘324 reexamination has issued an Action Closing Prosecution.  Presumably, the Judge must now determine whether to issue an injunction against future infringement despite these adverse rulings at the PTO.

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