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[MLM]

Can anyone offer any guidance with respect to the presumption of validity for an original patent while that patent is being reexamined? Specifically, when does it end, and when does the presumption begin for the reexamined patent?

Does the presumption end upon issuance of the reexam certificate? Or upon publication?

The specific situation is that a patent is being litigated, and also reexamined. The examiner has allowed all of the original claims, but the trial is coming up soon and possibly before the certificate issues. So there is some uncertainty about whether there is still a presumption of validity for the original patent right now.

Any thoughts would be appreciated!

[MLM]

Based on some research, I think the short answer is that concurrent reexamination of a patent has no legal effect on the presumption of validity and burden of proof for showing the original patent claims are invalid. Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988). It may have a practical effect on the burden of proof, but that seems to depend on what prior art is being considered by the court versus the PTO, and the outcome of the reexam.

[JimIvey]

I thought it was typical to stay any litigation of a patent under reexamination pending the reexamination.  I find it a little surprising that a case involving a patent whose future is a bit uncertain would go forward.

Regards.

[horsechute]

37 CFR 1.570(f) says:

A notice of the issuance of each certificate under this section will be published in the Official Gazette on its date of issuance.

"I find it a little surprising that a case involving a patent whose future is a bit uncertain would go forward."

An appeal in a patent reexam can take years.

[heyitsjohn2002]

Can anyone offer any guidance with respect to the presumption of validity for an original patent while that patent is being reexamined? Specifically, when does it end, and when does the presumption begin for the reexamined patent?

Does the presumption end upon issuance of the reexam certificate? Or upon publication?

The specific situation is that a patent is being litigated, and also reexamined. The examiner has allowed all of the original claims, but the trial is coming up soon and possibly before the certificate issues. So there is some uncertainty about whether there is still a presumption of validity for the original patent right now.

Any thoughts would be appreciated!

three is no presumption of validity; the burden/barrier is that a party has to "raise a substantial new question of patentability"

[heyitsjohn2002]

I've come to realize it's a pretty low threshold.. basically, if, for example, a third party requester presents an argument, the argument basically has to be strong enough to say 1) this is a new question, and 2) if presented to a reasaonable examiner, it would've been considered "important" during the original prosecution.  That can basically be anything under the sun.

[JimIvey]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination.  I understand that reissue examiner examination requires surrender of the patent, making enforcement during reissue examination unavailable.  I'm not sure of the status of a patent while reexamination is going forward.

As I mentioned above, it seems typical that any litigation involving a patent under reexamination is stayed.  Reexamination used to be a common defensive maneuver to at least delay the action and take pot shots (or perfectly legitimate shots) at the patent.  Early on, claims would pass muster relatively quickly after reexamination and the litany of references weren't very useful to challenge in court once an examiner had considered them all.  So, it became a patent asserter's mechanism for bolstering validity by reducing the availability of references not previously considered during (re)examination.

Still, these litigations seemed to always be stayed pending reexamination.  I haven't researched the issue, so perhaps my observations weren't (and aren't) representative of what really happens.  With the way things are in the PTO currently, I would expect reexamination to be a powerful tool for the accused -- everything is rejected and everything goes to the BPAI to wait for years. 

Regards.

[khazzah]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination. 

Agreed: that is how I understand the question too.

I understand that reissue examiner requires surrender of the patent, making enforcement during reissue examination unavailable.  I'm not sure of the status of a patent while reexamination is going forward.

You just said "reissue". But the original question was about reexam.

I've read about a number of cases where litigation was *not* stayed while a reexam is happening. See, e.g., http://www.whda.com/blog/2010/08/how-not-to-ask-for-a-stay/

[JimIvey]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination. 

Agreed: that is how I understand the question too.

I may have misread heyitsjohn, but it seemed he was answering a different question.

You just said "reissue". But the original question was about reexam.

Right.  My point was to note what happens in a similar situation, wondering if anything similar happens in reexam.

I've read about a number of cases where litigation was *not* stayed while a reexam is happening. See, e.g., http://www.whda.com/blog/2010/08/how-not-to-ask-for-a-stay/

The stay didn't make sense in that particular case since a related application (with nearly identical spec and validity issues related to the same references) was not under reexam.  So reexam wasn't likely to resolve issues before the court; it would still have to consider the same references in a nearly identical context.

Still, thanks for the link.  I hadn't looked at that issue in a long time.

Regards.

[Isaac]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination.  I understand that reissue examiner examination requires surrender of the patent, making enforcement during reissue examination unavailable.  I'm not sure of the status of a patent while reexamination is going forward.

Reissue involves surrender of the patent at the conclusion of the reissue process.   The patent is enforceable prior to the surrender.

[JimIvey]

Thanks for the clarification/correction, Isaac.  I didn't know that.

Regards.

[horsechute]

Interesting thought: I suppose it is possible to be found not guilty of infringing someone's patent, only to be at least theoretically guilty of currently infringing the patent when its reexamination certificate issues on the same day that the decision of non-infringement is handed down.

[bleedingpen]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination.  I understand that reissue examiner examination requires surrender of the patent, making enforcement during reissue examination unavailable.  I'm not sure of the status of a patent while reexamination is going forward.

Reissue involves surrender of the patent at the conclusion of the reissue process.   The patent is enforceable prior to the surrender.

Correct.

In re stays of litigation- most Courts will gladly put the responsibility of sorting through claims of an issued patent off on the USPTO.  Are there instances where the Courts have refused stay?  Sure.  But they are not common. 

[heyitsjohn2002]

I think the question is whether the presumption of validity remains in force in litigation if the patent is simultaneously undergoing reexamination.  I understand that reissue examiner examination requires surrender of the patent, making enforcement during reissue examination unavailable.  I'm not sure of the status of a patent while reexamination is going forward.

As I mentioned above, it seems typical that any litigation involving a patent under reexamination is stayed.  Reexamination used to be a common defensive maneuver to at least delay the action and take pot shots (or perfectly legitimate shots) at the patent.  Early on, claims would pass muster relatively quickly after reexamination and the litany of references weren't very useful to challenge in court once an examiner had considered them all.  So, it became a patent asserter's mechanism for bolstering validity by reducing the availability of references not previously considered during (re)examination.

Still, these litigations seemed to always be stayed pending reexamination.  I haven't researched the issue, so perhaps my observations weren't (and aren't) representative of what really happens.  With the way things are in the PTO currently, I would expect reexamination to be a powerful tool for the accused -- everything is rejected and everything goes to the BPAI to wait for years. 

Regards.

Yeah, I missed the whole OP.  Oops.  Thanks for catching!

[MLM]

The question arose in the context of litigation. In this case, the examiner has already issued a Notice of Intent to Issue Reexamination Certificate (why is it "NIRC" and not "NIIRC"?) confirming all claims in the original patent. My understanding is that the original patent is entitled to a presumption of validity until the certificate is issued, which may not be until after the trial is scheduled to begin (if it is not stayed). The presumption should not go away when the certificate issues because all of the claims will be intact, and it may help to strengthen the presumption if the court is considering the same art that the PTO did during prosecution/reexam.