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Prior court decision of no invalidity based on prior art reference doesn't bar reexamination

By McKee, Voorhees & Sease, P.L.C.

The Federal Circuit recently construed the scope of the revised reexamination statute, 35 U.S.C. § 303, specifically what is required for a "substantial new question of patentability."  In this case, the relevant reference was cited during the initial examination of the application that led to the patent under reexamination, but as a supporting reference.  The reference was also the subject of invalidity claims in an infringement litigation.  In that case, the district court and Federal Circuit concluded the accused infringer had not met its burden to show invalidity by clear and convincing evidence.  

The losing party in the litigation then sought reexamination of the patent.  The USPTO granted reexamination, and subsequently held the relevant claims unpatentable based on the same prior art asserted in the infringement case and used as a supporting reference during the original prosecution.  The patentee appealed, arguing the reference could not pose a new question of patentability, given its previous consideration by both the USPTO and the Federal Circuit.

The Federal Circuit affirmed.  Noting the differing burdens of proof in litigation and reexamination, the court found the two outcomes were not necessarily contradictory.  Further, given the amendment to § 303 in 2002, the court held that a substantial new question of patentability could be found even if the prior art was considered by the USPTO during the original prosecution.  Under the revised statute, "a reference may present a substantial new question even if the examiner considered or cited a reference for one purpose in earlier proceedings."  The relevant question is "whether the particular question of patentability presented by the reference in reexamination was previously evaluated by the PTO. . . . Section 303(a) as amended . . . requires a more context-specific approach that is based on an analysis of what the PTO actually did."  This determination "will generally require an analysis of the record of the prior proceedings to determine if and how the examiner used the reference in making his initial decisions."  This is a question of fact that will be reviewed for substantial evidence, but the ultimate question of whether a substantial new question of patentability exists is a question of law.

Here, because the reference was "not evaluated as a primary reference that taught or made obvious the specific analytical method claimed," there was a substantial new question of patentability, and the grant of reexamination was proper.

More detail of In re Swanson after the jump.

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Full post as published by FileWrapper on September 17, 2008 (boomark / email).