Estoppel : US PTO Litigation Alert™

Inter Partes Reexamination Estoppel Central in Sanctions Decision

Scott Daniels | December 3, 2013

Judge Mitchell Goldberg’s decision yesterday in Bortex Industry v. Fiber Optic Designs (12-cv-4228, E.D. Pa.) – entering judgment against the accused infringer because of discovery misconduct – sheds light on the statutory estoppel faced by those who sponsor, but do not themselves file, inter partes reexamination requests.  35 U.S.C. § 315(c) (pre-AIA) (a similar provision applies to AIA inter partes review requests). Essentially, “a real party in interest” to an inter partes reexamination proceeding is estopped from later attacking, in any civil action, the validity of any claim determined to be patentable on any ground which that third party raised or could have raised during the reexamination.

The case began when Bortex Industry, a Chinese maker of LED Christmas lights, sued Fiber Optic Designs (FOD) for declaratory judgment (1) that Bortex’s LED lights did not infringe two patents owned by FOD, and (2) that the patents were invalid because they were obvious over the prior art and because Bortex’s chairman had previously invented the claimed LED lights.  FOD counter-claimed for infringement of both patents and moved for  preliminary relief further to the stipulated infringement of one of the patents.

Significantly, FOD had successfully sued NEP, a customer of Bortex, in Colorado for infringement of FOD’s patent.  During that dispute, FOD’s patent survived an inter partes reexamination in which NEP was listed as the real party in interest.  FOD asserted that Bortex had participated in that reexamination and indemnified NEP’s expenses.  Accordingly, FOD argued, Bortex had been a real party in interest and would be estopped from asserting in the present litigation any prior art references that had been “raised or could have been raised during the reexamination.”

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Judge Robinson Distinguishes Between Reexamination and Reissue

Scott Daniels | September 24, 2012

Judge Sue Robinson of Delaware ruled last week that patentees Senju and Kyorin and their licensee Allergan were precluded from suing Apotex a second time for infringement of a single patent.  The dispute between the parties began several years ago when the patentees filed a first action against Apotex for infringement of claims 1-3, 6-7 and 9 of U.S. Patent No. 6,333,045 that claimed compositions comprising gatifloxacin and methods of treating eye disorders with those compositions.

Apotex ultimately prevailed in that first litigation, when Judge Robinson ruled that the asserted claims of the ‘045 patent were invalid over certain prior art references and the CAFC later affirmed her judgment of invalidity.  During the pendency of that first litigation, the patentees requested and pursued a reexamination of the ‘045 patent.  (They did so, Judge Robinson notes with apparent annoyance, “without the court’s knowledge” or informing Apotex).  In that reexamination, the PTO rejected the original ‘045 claims as obvious over the prior art, and the patentees amended their claims to distinguish over that art.  Ultimately, the PTO issued a reexamination certificate cancelling claims 1-3 and 8-11 and allowing amended claim 6 and added claims 12-16.  The surviving claims were narrower in scope than the original claims.

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Inter Partes Estoppel Limited to New or Changed Claim Wording

Scott Daniels | June 27, 2012

The scope of estoppel on an unsuccessful requester in inter partes reexamination was tested yesterday in ScriptPro v. Innovation Associates, Inc., 2012 U.S. Dist. LEXIS 87861.  Under 35 U.S.C. § 315(c), a third party who requests inter partes reexamination “is estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”  (Emphasis added). 

In yesterday’s decision, the accused infringer Innovation moved for summary judgment that it was not estopped – because of an unsuccessful inter partes reexamination that it had earlier pursued against the patent-in-suit – from asserting that certain claims in the patent were invalid under 35 U.S.C. §112, ¶ 1.  The patent owner ScriptPro opposed, asserting that Innovation could not challenge the validity of claims 1 and 2 because of estoppel: Innovation had been free to, and did in fact, raise § 112 challenges during reexamination, and it was therefore estopped under § 315(c) from raising those defenses in the present litigation. 

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When does Inter Partes Reexamination Estoppel Kick In?

Scott Daniels | October 4, 2011

The CAFC’s decision yesterday in Bettcher Industries v. Bunzl gives much needed guidance on the relationship between patent infringement actions in District Court and parallel reexamination proceedings at the PTO.  The specific holding is that the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) takes effect when “all appeal right [in the reexamination] are exhausted, including appeals to” the CAFC – an inter partes reexamination requester may not re-litigate in a later infringement action, any invalidity issue that it raised and lost, or could have raised but did not, in its inter partes reexamination. 

Bettcher sued Bunzl for infringement of a patent for a rotary knife.  Running parallel to Bettcher’s infringement action was an inter partes reexamination requested by Bunzl.  At trial in the infringement action, the judge ruled that Bunzl was estopped under 35 U.S.C. § 315(c) to present prior art that had been asserted in the reexamination because the examiner had already determined that the patent was valid despite Bunzl’s prior art.  The judge reasoned that the examiner’s validity determination was final because the examiner had issued a Right of Appeal Notice (a notice roughly analogous to an Advisory Action in original prosecution).  At the end of the trial, the jury concluded that Bettcher’s patent was not invalid and not infringed. 

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