Could the PTO’s Proposed Rule Changes Increase Courts’ Reliance on PTO Reexamination Decisions?

Scott Daniels | April 28, 2011

On Monday the Patent Office published for public comment a long list of proposed changes to the rules by which it conducts ex parte and inter partes reexamination proceedings.  Essentially, the changes would reduce the complexity of various steps in the typical reexamination and thereby significantly shorten reexamination pendency.  Such changes are necessary in a time of reduced budgets and increased filings, and reexamination practitioners are now busily preparing their comments on the Office’s proposals.

The rule changes will of course have a significant impact on the mechanics of reexamination practice.  But the greater effect might be on the inclination of trial judges in their patent infringement cases to defer to, or at least consider, PTO reexamination decisions – specifically, judges may be more inclined to wait for the PTO to resolve issues in reexamination if reexaminations are completed more quickly

Over the past several years, we have seen an increasing tendency among trial judges to defer to PTO determinations of the basic reexamination issues of claim construction and patent validity.  In some instances, this deference is shown when a judge stays an infringement action pending completion of a reexamination proceeding.  In other cases, courts cite reexamination decisions as support for their conclusions on claim construction, anticipation and obviousness, and sometimes even on issues of willfulness, preliminary relief, and materiality in inequitable conduct defenses.

For instance, on Monday Judge Ronald Whyte of the Northern District of California was asked in Cellectricon v. Fluxion Biosciences to lift a stay of an infringement action, in view of certain developments in the reexaminations of the patents-in-suit.  Judge Whyte chose not to lift the stay because of a perceived inconsistency between two Office Actions in two of the reexaminations regarding interpretation of an important prior art reference.  He explained that “the court is generally reluctant to stay a case because of the potential delay in obtaining a final resolution from the PTO or the Federal Circuit, [but] here, the court finds that there is a legitimate basis for temporarily staying the case to see how the reexamination process will resolve the apparent conflict.” 

Perhaps Judge Whyte will defer to the PTO on the interpretation of the reference, perhaps not.  But it is clear that he wants to have the PTO’s opinion on the issue.  And it is even clearer that he is willing to wait for that opinion only because he expects to receive it without great delay.  This focus on delay is a constant theme in trial courts’ consideration of PTO reexamination decisions.  If, in fact, the PTO’s proposed changes in the rules do reduce reexamination pendency, that greater expedition will be noticed by the courts and might accelerate the shift in decision-making in patent cases from the courts to the PTO.

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