Some facts in regard to outcome of patent re-examination
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Claim amendments. The patent owner may potentially add limitations to the claims by amendment that enhance the claim validity yet still read on the accused infringer. In reexamination, the patent owner can amend the claims to make them more narrow, thereby potentially making the claims patentable over the prior art. In this case it may be possible for the patent owner to add limitations that still result in the claims covering the accused device. This provides an opportunity for the patent owner that it would not normally have in litigation.It is a general rule that by narrowing its scope by amendment, a claim cannot be interpreted to cover something that it did not previously cover. In other words, if a party did not infringe before the amendment, it will not infringe after the amendment.
Therefore the requester’s arguments for non infringement in the litigation cannot get worse, but they may improve.If the amended claims are later found to be valid and infringed, the accused infringer may have intervening rights to use existing products without payment of any
type of monetary damage.Perception that examiners are inclined to allow claims. Although this perception cannot be quantified, it is prevalent and therefore should be addressed. The statistics provided above show that while it is rare that reexamination results in full cancellation of all claims, in the majority of cases the claims are initially rejected and then amended. (64% of ex parte reexaminations result in claim amendments; The patent owner shall be permitted to propose any amendment to the patent and a new claimor claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.”
Therefore the requester’s arguments for non infringement in the litigation cannot get worse, but they may improve.If the amended claims are later found to be valid and infringed, the accused infringer may have intervening rights to use existing products without payment of any
type of monetary damage.Perception that examiners are inclined to allow claims. Although this perception cannot be quantified, it is prevalent and therefore should be addressed. The statistics provided above show that while it is rare that reexamination results in full cancellation of all claims, in the majority of cases the claims are initially rejected and then amended. (64% of ex parte reexaminations result in claim amendments; The patent owner shall be permitted to propose any amendment to the patent and a new claimor claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.”
From Advanced patent law institute
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