Using Reexamination to Turn up the Heat on the Patentee

Scott Daniels | November 22, 2010

Reexamination is often touted as part of a strategy for an accused infringer to reduce the intensity and risk of litigation, and rightfully so.  For instance, a company sued for infringement in the patent-friendly Eastern District of Texas might consider seeking transfer to a more convenient forum.  It might then request reexamination, followed by a motion to stay the court case pending completion of the reexamination. If successful, this strategy shifts the action from the court to the less expensive, more defendant-friendly Central Reexamination Unit at the PTO.

The reexamination requests filed earlier this month by Samsung against two Fractus S.A. patents, however, remind us that reexamination may also be used to intensify litigation.  As we reported, Fractus had sued Samsung and several other mobile telephone makers in the Eastern District of Texas for infringing nine patents related to internal antennas for mobile telephones.  Counting its two recently-filed requests, Samsung has now sought reexamination against all nine Fractus patents-in-suit. The table below shows the current status of Samsung’s requests.

Fractus Patent No.(Reexamination No.) Patent Title Reexamination Status
7,015,868(95/001,390) Multilevel Antennae Rejection 08-19-10
7,123,208(95/001,389) Multilevel Antennae Rejection 08-12-10
7,148,850(95/001,413) Space-Filling Miniature Antennae Rejection 10-08-10
7,202,822(95/001,414) Space-Filling Miniature Antennae Reexamination   Request Filed    10-08-10
7,312,762(95/001,461) Loaded Antennae Reexamination   Request Filed    10-01-10
7,394,432(95/001,483) Multilevel Antennae Reexamination   Request Filed    11-11-10
7,397,431(95/001,482) Multilevel Antennae Reexamination   Request Filed    11-11-10
7,411,556(95/001,462) Multi-Band Monopole Antennae for a Mobile Communications Device Reexamination   Request Filed    10-01-10
7,528,782(95/001,455) Multilevel Antennae Reexamination   Request Filed    09-30-10

In the meantime, the law suit in Texas is proceeding apace.  Though four of the defendants (Sanyo, Sharp, UTStarcom, and Personal Communications Holdings) have settled, Samsung, along with the other Defendants (LG, RIM, Pantech, Kyocera, Palm, High Tech Computer, and HTC), are vigorously defending.[1]  Samsung has not sought to transfer the case out of Texas or to stay the case pending completion of the reexaminations.  Litigation strategies for patentees are often couched in terms of maximizing the pressure on the accused infringers, but Samsung’s approach maximizes the pressure on the patentee Fractus.  We do not mean to suggest in any way that Samsung’s reexamination requests were motivated by a desire to increase Fractus’ litigation costs, or for any other questionable purpose, but only to observe that Samsung’s approach likely maximizes its chances of prevailing in its dispute with Fractus.

The fact that the inter partes requests are filed by Samsung, but not the other Defendants, creates an interesting estoppel issue.  Once inter partes reexamination is ordered for a patent under 35 U.S.C. § 313, the requester is estopped from the asserting the invalidity of that patent in a later court case on any ground it “raised or could have raised” in the reexamination.  Further, 35 U.S.C. § 311(b)(1) requires that a reexamination request “include the identity of the real party in interest,” presumably so that the parties subject to the estoppel provision of § 313 may be identified at the outset. 

A question for Fractus, therefore, is whether it wants to file a petition requesting that the reexaminations be vacated, arguing that the requests did not name all the “real parties.”  The fact that reexamination requests have unambiguously identified Samsung as the sole party in interest, on the other hand, suggests that such a petition would not be successful.  See Inter partes 95/000,407, Decision of July 29, 2010, page 10 (“Neither the inter partes reexamination statute nor the inter partes reexamination rules imposes a duty on the Office to investigate the accuracy of an unambiguous identification of the real party in interest in a third party requester’s request for inter partes reexamination proceeding.”)

The timing of Samsung’s reexamination requests – early in the litigation – is also worth noting.  It clearly avoids the unfortunate situation of an accused infringer belatedly pursuing reexamination only after it has suffered a loss in court. 

[1] Only Kyocera has moved to transfer, but its motion was denied.

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