Judge Randa Refuses to Lift Reexamination Stay despite Patentee’s Success (so far) with Examiner

Scott Daniels | December 1, 2011

Courts cite 35 U.S.C. § 316(a) for the proposition that a reexamination is “complete” only when the PTO issues its reexamination certificate, canceling, confirming, amending original claims, and/or adding new claims.  It is common for a patentee to cite § 316(a) for the proposition that the court should not consider developments in a reexamination until the proceeding is complete, i.e., until the PTO issues its certificate.  On Tuesday, however, in Generac Power Systems v. Kohler, it was accused infringer who invoked § 316(a), in this case to maintain a reexamination stay despite a decision by the reexamination examiner in favor of patentability. 

This past July, Judge Rudolph Randa of the Eastern District of Wisconsin stayed the infringement action pending resolution of the reexamination of the patent-in-suit, U.S. Patent No. 7,230,345 (related to a specific method of operating engine-driven electrical generators).  In September, the reexamination examiner issued an Action Closing Prosecution, indicating that the patentability of all claims had been confirmed.  Armed with this victory at the PTO, the patentee asked Judge Randa to lift the stay and allow the infringement action to proceed.

But Judge Randa refused, citing § 316(a).  “Reexamination of a patent is only complete upon the PTO’s issuance of a certification canceling or confirming the patent … [and] certificates cannot issue until all appeals are concluded.”  Here, the accused infringer advised the Court that it does intend to appeal the examiner’s confirmation of the claims, once the examiner issues a Right of Appeal Notice.  Judge Randa concluded: “The inter partes reexamination is therefore not complete, and Generac’s motion to lift the stay is denied.”  

The result must be especially galling for the patentee inasmuch as its patent survived an earlier ex parte reexamination with all claims intact.  For accused infringers, Judge Randa’s ruling is further evidence of the strength of reexamination.

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