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- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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Patentee in Inter Partes Reexamination Faces Difficult Task in Proving that Real Party in Interest is not Named
| 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.
