Preliminary Injunction Softened after Claims are Rejected in Reexamination

Scott Daniels | February 15, 2011

The list of possible benefits from reexamination for an accused infringer grew a little longer last week.  In Celsis In Vitro v. CellzDirect, (Case No. 1:10-cv-004053), Judge Milton Shadur modified a preliminary injunction to permit defendants, under certain circumstances, to sell products made by their accused methods, in light of the PTO’s rejection of the claims-in-suit in a copending reexamination proceeding.

Celsis sued CellzDirect and Invitrogen in June 2010, for infringement of U.S. Patent No. 7,604,929, and in September Judge Shadur preliminarily enjoined defendants from selling the products made by the accused method during the pendency of the case.  On October 8, the patentee Celsis requested ex parte reexamination of the ‘929 patent, and on December 16, the examiner rejected the claims-in-suit over a series of prior art references.  The defendants then argued to the court that this rejection justified revision of the preliminary injunction.  Judge Shadur agreed and has now revised  his earlier order to allow defendants “to fill any outstanding or repeat orders from prior purchasers.”  Defendants are also allowed to use their existing inventory, for instance in their own comparison testing.

An interesting side issue has arisen at the PTO from a request by CellzDirect for inter partes reexamination five days after Celsis’ request for ex parte reexamination.  The examiner denied CellzDirect’s request, under MPEP §§ 2640 & 2642, because of the Celsis’ earlier request.  CellzDirect filed a petition, arguing that the denial was improper because its request for inter partes reexamination was filed before the ex parte reexamination was ordered, and because its request for inter partes reexamination raises substantial new questions of patentability not raised in the patentee’s ex parte reexamination.

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