Patent Invalidated in Court despite Earlier Success in Reexamination

Scott Daniels | December 13, 2011

It is an article of faith among patent litigators that a patent emerging successfully from reexamination is nearly impervious to a later validity attack in an infringement action in court.  Judge Robert Chatigny’s ruling last Friday in Jacobs Vehicle Equipment v. Pacific Diesel Brake, 2011 U.S. Dist. LEXIS 142228 (D. Conn.), however, shows that reexamined patents are not invulnerable.

 A competitor sued the patentee for a declaratory judgment that the patent was obvious over the prior art, this despite an earlier confirmation by the PTO in reexamination that the claims were patentable over the art without need of amendment.  After a lengthy trial, Judge Chatigny declared the patent invalid over the prior art.  The Judge acknowledged that his conclusion was “at odds” with that of the reexamination examiner, but asserted that he had a better opportunity than the examiner to consider the prior art.

 The record before me on issues relating to obviousness is far more complete than the one before the PTO. The ex parte reexamination interview lasted about forty-five minutes. The trial, which was more about invalidity than infringement, lasted several weeks. Nearly all the prior art was before the examiner. But he did not have the benefit of the extensive evidence and arguments submitted to me.

Judge Chatigny also acknowledged that a reexamined patent is often said to enjoy a “heightened presumption of validity.”  In this case, however, the Judge found that two considerations detracted from that stronger presumption. 

First, the Judge wondered whether the examiner had examined the claims on the basis of their actual wording or on the basis of what was said to him during an interview.  “In light of this, the ‘patented invention’ the examiner evaluated may be the one disclosed in the ‘289 patent’s specifications, not the one it actually claims.”

Second, the Judge noted that the reexamination took place in 2005, before the Supreme Court’s decision in KSR.

 The patent examiner likely used the Federal Circuit’s stricter “teaching, suggestion, or motivation” test to determine whether it would have been obvious to combine Okamura with Sato or any other prior art, including the Jake Brake itself. Under the old test, perhaps the examiner’s decision was appropriate. Under KSR’s more flexible test, however, there is motivation to combine Okamura with other references on combination braking. Therefore, I believe I am justified in finding certain claims in the ‘289 patent obvious although the patent examiner did not.

Judge Chatigny not only asserted his authority to make his own decision regarding obviousness, he also analyzed the claims and the prior art with great care in reaching that decision. 


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