Patentee in Inter Partes Reexamination Faces Difficult Task in Proving that Real Party in Interest is not Named
Scott Daniels | June 27, 2011
The major advantage for a party requesting inter partes, rather than ex parte, reexamination is the opportunity to reply to each of the patentee’s argument throughout the proceeding. The major disadvantage is that the requesting party must identify itself as “the real party in interest,” thereby subjecting it to the estoppel effects of 35 U.S.C. § 315(c) § 317(a) & (b).
The “real party in interest” arises most often where a patentee sues multiple defendants for patent infringement, and one of the co-defendants requests inter partes reexamination, identifying only itself as the real party in interest. Since the statutory inter partes estoppel effects are applicable only against the co-defendant pursuing reexamination, the patentee faces the prospect of facing the validity defenses raised in the reexamination a second time, either in the infringement litigation or in subsequent inter partes reexaminations. This means that those co-defendants, who have not requested reexamination, stand to benefit if the reexamination is successful, but face no adverse estoppels if the reexamination is not successful. The patentee, in such a case, will challenge the identification of a sole co-defendant in an inter partes reexamination request as failing to identify all the real parties in interest and ask the PTO to vacate the reexamination order.