Inter Partes Reexaminations Moving More Quickly, at least most of the Time

Scott Daniels | February 28, 2012

There is a good deal of anecdotal evidence that the PTO is handling inter partes reexaminations very expeditiously, some might even say precipitously.  Yet, from time-to-time, an outlier case arises casting doubt on the capacity of the reexamination system to substitute for the District Courts as an efficient arbiter of prior art validity issues.

Such a case is Tempo Lighting v. Tivoli (95/000,067) where, today, the PTO Board of Appeals confirmed the rejection of two of the claims in reexamination, but reversed the rejection of the remaining 11 claims.  The PTO docket does not show an inordinate amount of activity caused by the patent owner or the requester (though there was a brief period of abandonment).  The request was filed at the end of 2004, followed by multiple non-final rejections, an action closing prosecution in May 2009, a right of appeal notice in June 2010, the patent owner’s appeal brief in September 2010, and an oral hearing at the Board this past November.

What might distress the patent owner Tivoli is that it sued Tempo in 2004 and the trial judge stayed the case in April 2005 after the PTO issued its first rejection.  The judge’s 2005 order stated that “[w]ithin two weeks of the final resolution of the reexamination [the parties shall file] with the Court a motion to vacate the stay and proceed with the matter in light of the USPTO determination.”  Requester Tempo now has the option of requesting reconsideration by the Board or pursuing an appeal at the CAFC.

Of course, Tivoli might construe today’s decision from the Board as “a final resolution” by the PTO and move the trial judge to vacate the stay.  The trial judge, who presumably did not expect such resolution to take nearly seven years, might look favorably on such a motion.

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