However, this is not simply a one way street where only defendants may benefit from the reexamination process. Patentees benefit from the reexamination process in a number of ways, as well. One way is that potentially “troublesome” prior art may be cited to the USPTO, be considered by the examiner, and thus become of little utility to the defendant once the reexamination process is completed. In fact, in inter partes reexaminations, prior art that was considered by the USPTO and provided by the requestor provides an estoppel function if and when the patent goes back to the court for adjudication.

Furthermore, from a patentee standpoint, the reexamination process, whether filed by the patentee or by a defendant/requestor, has the benefit that the claims can be “fine tuned,” albeit more narrowly, to fit more precisely the allegedly infringing goods. This has the advantage of eliminating potential ambiguity in the claims that may be naturally due to the fact that when the claims were drafted and prosecuted, the specific allegedly infringing product was not in existence or invented.

Another benefit of the reexamination system to the patentee is the potential ability to help deflect an inequitable conduct charge. While the USPTO is prohibited in the reexamination process from considering inequitable conduct, the examiner certainly can review the prior art that may be used by a defendant to show materiality. If the patentee can convince the examiner that a particular piece of prior art was in fact not material, one of the two branches of inequitable conduct is in fact cut off and a charge of inequitable conduct defeated.

For a defendant in a patent lawsuit which believes that filing a reexamination request might promote settlement for the case, it must be remembered that once the reexamination request is filed and granted, the “die is cast” and the settlement of the litigation in no way will affect, at least for ex parte reexaminations, the progress and process of the reexamination of the patentee’s patent. This may mean that while the patent suit has been settled between the parties, the reexamination process drones on to its normal conclusion, since, as mentioned above, in an ex parte reexamination there is no participation of the requestor after a certain point. However, in an inter partes examination, the settlement of the underlying lawsuit will normally require the defendant/requestor to halt its participation in the inter partes reexamination, at which point the reexamination will effectively revert to an ex parte reexamination, with the additional benefit that the patentee will be able to make arguments only to the USPTO examiner and will not have to fend off negative charges by the defendant/requestor.

So, in the end, which party is more favored in the reexamination process? We believe that for a patentee, the advantages lie with the ex parte form of reexamination, because the reexamination process is between the USPTO and the patentee only, and thus the patentee can interview the reexamination patent examiner outside the presence of the requestor/defendant, and perhaps have a better ability to convince the examiner that the claims are patentable over certain prior art. An ex parte reexamination allows the patentee the ability to better control claim terms and to get prior art before the examiner. From the standpoint of a defendant, we believe the inter partes reexamination process is generally superior, albeit more expensive, largely due to the fact that the process can be dragged out for years, perhaps eliminating the threat of a shut down by successful patent litigants by way of an injunction if the patent expires during the reexamination.(excerpts)

By Jason Mirarito ( Mintz levin patent litigation group )

Dec , 2010