Conventional wisdom used to be that a recommendation to an accused infringer to seek inter partes reexamination bordered on legal malpractice. While inter partes reexamination requests are relatively rare, their popularity is increasing. A primary reason for the increased popularity is the advantages that inter partes reexamination requests provide: (1) no presumption of validity, (2) broadest reasonable claim construction, (3) no discovery into the accused product, (3) direct involvement with technically trained decision makers at the PTO, and (4) advantageous treatment for stays oif litigation.
Tun-Jen Chiang, Assistant Professor of Law, George Mason University School of Law, recently published an article titled "The Advantages of Inter Partes Reexamination," where he discusses many of the advantages of inter partes reexamination listed above, and also provides some insight on "overcoming the ghost of litigation estoppel."
One of the issues for accused infringers is that PTO examiners are randomly selected, which injects uncertainty into the process. Chiang argues that the alternative can be potentially worse:
Because the plaintiff receives a great deal of deference in the selection of forum, and because patent infringement cases can usually be brought in any district nationwide, the jury will almost always be from the most favorable district that the patent owner can find. In short, the choice for an accused infringer is between a randomly selected PTO examiner and a jury selected by the patent owner as the arbiter of patent validity.With regard to litigation estoppel, Chiang finds this fear "overblown":
In short, litigation estoppel prohibits accused infringers from having two bites at the apple–contesting validity in both the PTO and the district court. It is altogether irrational, however, to consider choosing the PTO in this dichotomy as “malpractice,” as the prevailing wisdom has done. It is similarly overblown that fear not being able to contest validity in litigation appears to have driven accused infringers to flee the PTO into the arms of Eastern District of Texas juries; without realizing this choice to contest validity in litigation equally foregoes an opportunity–the opportunity to contest validity in the PTO. An analogy would be a child who, being denied having both milk and cookies and forced to choose only one, chooses his less preferred option in a tantrum; such a child, of course, injures no one but himself.Finally, when compared to ex parte reexaminations, the estoppel effect of inter partes proceedings aren't all that different:
Read/download Chiang's article here (link)
An ex parte reexamination, of course, is relevant to the accused infringer only if the reexamination (including appeals of the PTO decision) concludes before or concurrently with the final judgment in litigation. Once final judgment is entered in litigation, the judgment is enforceable even if the patent is later declared invalid [See In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007)].
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Once a prior art reference has been considered by the PTO, the presumption of validity becomes “especially difficult” to overcome. In practice, only a few cases have done so. While accused infringers may think they can relitigate validity after the PTO confirms the patent over newly discovered prior art in an ex parte reexamination, the ability to successfully litigate validity after reexamination is compromised. Rather than attempting to relitigate validity after losing the reexamination–with the heightened presumption of validity–accused infringers will likely be better off increasing their chances of preventing that loss in the first place, by having the opportunity to present their arguments to the PTO. While ex parte reexamination does not create litigation estoppel de facto, it comes fairly close to doing so.