Strategic Considerations When Litigation is Threatened or Pending

This resource addresses the interplay between patent litigation before the Federal Courts or the United States International Trade Commission (“ITC”) (“the courts”) and co-pending reexamination proceedings involving the patent-in-suit before the United States Patent and Trademark Office (“PTO”). As independent arbiters of patent validity, each forum poses a distinct set of challenges and risks for those disputing or defending patent validity. These so-called “parallel universes” work with separate rules, standards, procedures, timelines, and results in cases involving the same patent.

A comprehensive strategy should be in place before filing a reexamination request. The requester should have a clear objective and should be fully aware of the consequences of filing a reexamination request. Once filed, the requester cannot “unfile” the reexamination as part of a settlement with the patent owner. In a recent example, we are told that a third party requester attempted to halt a reexamination proceeding by stopping payment of a check for the reexamination fee. The PTO indicated that such actions could result in OED imposing a suspension of the attorney from PTO practice for taking the action.

After the reexamination is instituted, it will take on a life of its own. Many pitfalls await the unwary requester who has not fully thought out the consequences of filing a reexamination request. The following sections are presented roughly in chronological order. Here we present advanced reexamination strategy considerations where federal court or ITC litigation is threatened or pending. This section presumes some basic knowledge of reexamination practice. We discuss timing of reexamination requests, the risk versus reward calculus, general reexamination tenets, and other, often overlooked considerations.

Overview

• Timelines and Pendency
• Settlement
• Litigation Stays
• Impact on Trial
• Damages
• Potential risks for accused infringers
• Timing of the Requests – When to File?
• Multiple Ex Parte Reexamination Requests
• Flowcharts and Diagrams

Strategic Considerations When Litigation is Threatened or Pending

This resource addresses the interplay between patent litigation before the Federal Courts or the United States International Trade Commission (“ITC”) (“the courts”) and co-pending reexamination proceedings involving the patent-in-suit before the United States Patent and Trademark Office ......................

http://reexamcenter.com/essentials/reexamination-timeline/