Another Reason to Choose Reexamination

Scott Daniels | August 28, 2012

Reexamination practitioners are fond of listing the advantages that reexamination offers an accused infringer, as compared to defending an infringement action in District Court.  Last month the list grew a little longer, at least for the handful of cases in which the enablement of an allegedly anticipatory reference is an issue.

It has long been recognized that an examiner in routine examination or in a reexamination may rely on a prior art patent, based on its disclosure alone – there is no need for the examiner to establish that the disclosure of the patent is enabling, because of a rebuttable presumption that the patent is enabled.  This presumption applies to both the claimed and the unclaimed subject matter in the prior art patent.  This principle is, of course, different from infringement actions and ITC investigations, where the initial burden is on the accused infringer to show that an allegedly anticipatory prior art patent is enabled.

Some have misunderstood this difference in treatment between the Patent Office and the Courts to be based on the statutory presumption enjoyed by patents.  This misunderstanding was corrected by the CAFC’s decision last month, In re Antor Media.  At issue was whether the examiner in a reexamination could presume that a prior art printed publication – allegedly by the requester to be anticipatory – was enabling.

Judge Lourie and the other members of the panel held that there a presumption does attach to a printed publication.  The Judge noted that with patents, the presumption has applied to both claims and the disclosure.  Thus, the presumption is not based on a statutory presumption of validity of the claims, but on the fact that the Patent Office does not have the resources to test a patent or printed publication for enablement.  It is therefore “procedurally convenient to place the burden on an applicant who is in a better position to show, by experiment or argument, why the disclosure in question is not enabling or operative.”  Judge Lourie continued that “we now hold that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.”

This rationale for the extension of the traditional presumption to printed publications – that the patentee is in a better position than the Patent Office to make the initial showing on the enablement issue – is of course equally applicable to other types of prior art, such as prior use, offer for sale, etc.  Thus, the holding of Antor Media will be applicable to all types of post-grant review as those proceedings develop over the next several years.

One more reason for an accused infringer to choose the Patent Office over the Courts.

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