Patent Law

Reexamination

By Gary Odom and Jordan Kuhn

It has become a common tactic for a patent infringement defendant to request a reexamination. Courts have no obligation to acknowledge such, but many will stay proceedings pending reexam outcome if it occurs early enough in the lawsuit. Courts also have no obligation to heed the results of a reexam. Once a lawsuit is initiated, the court has jurisdiction to decide as it sees fit.

Anyone may initiate a reexamination, including the patent holder. The PTO may spontaneously decide upon a reexamination, without provocation. 35 U.S.C. §303 requires the PTO Director to "determine whether a substantial new question of patentability is raised." If not, no reexam. "A determination by the Director... that no substantial new question of patentability has been raised will be final and nonappealable."

Previously cited art is not precluded. With Obzilla (KSR) stalking the nation, old art easily gets a new look for its obviousness value.

Recently, Avistar asserted 29 patents against Microsoft. Microsoft requested rexam against them all, but, so far, 14 requests have been denied. Microsoft would have done much better, but is no longer a Patent Hawk client.

Professor Crouch in Patently-O on ex parte reexamination.

Full post as published by The Patent Prospector on June 05, 2008 (boomark / email).