Patent Reexamination: The New Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings

Transcription

1 presents Patent Reexamination: The New Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings A Live 90-Minute Teleconference/Webinar with Interactive Q&A Today's panel features: Gregory Morse, Director, Central Re-Examination Unit, United States Patent and Trademark Office, Washington, D.C. Greg H. Gardella, Partner, Moderator, Irell & Manella, Los Angeles Timothy E. Bianchi, Shareholder, Schwegman Lundberg & Woessner, Minneapolis Anup Tikku, Senior Patent Litigation Counsel, ebay Inc., San Jose, Calif. David L. Schuler, Intellectual Property Counsel, Bose Corporation, Framingham, Mass. Wednesday, May 26, 2010 The conference begins at: 1 pm Eastern 12 pm Central 11 am Mountain 10 am Pacific You can access the audio portion of the conference on the telephone or by using your computer's speakers. Please refer to the dial in/ log in instructions ed to registrations.

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4 Patent Reexamination: Best Practices for Pursuing and Defending Parallel Reexamination and Litigation Greg Gardella Irell & Manella LLP Timothy Bianchi Schwegman, Lundberg & Woessner, P.A. Anup Tikku Ebay, Inc. David Schuler Bose Corp. bose.com

5 The Stats Pr roceeding gs Ex Parte Inter Partes 50 0 Q1 Q2 Q3 Q4 Q1 Q2 Q3 Q4 Q1 Q PTO Fiscal Quarter 5

6 The Stats Ex Parte Requests with Related Litigation FY 2004 FY % 32% Inter Partes Requests with ih Related Litigation FY 2004 FY % 68% 6

7 Ex Parte Stats canceled in 554 (10%) Claims changed in 3,469 (64%) Claims canceled in 95 changed in (15%) 492 (71%) confirmed in 1,410 (26%) confirmed in 102 (14%) (4 Through

8 Inter Partes Stats Claims changed in 9 (20%) confirmed in 4 (9%) Claims changed in 46 (51%) confirmed in 7 (8%) canceled in 31 (70%) canceled in 37 (41%) Through

9 Ex Parte v. Inter Partes canceled in 95 (15%) Claims changed in 492 (71%) Claims changed in 46 (51%) confirmed in 7 (8%) confirmed in 102 (14%) canceled ce ed in 37 (41%) 2009 Ex Parte 2009 Inter Partes 9

10 Stays % % Stays Granted (Cases Reported January 1991 April 2010) % Was 63.6% 68% 51.7% 38.9% 68% 67% was 59.7% 50% 50% Was Was 50% 39.1% 34% 10 0 ED Texas ND Cali D. Del ED VA WD Wisc. All Districts 10

11 Safoco v. Cameron No. 4:05cv00739, WL (S.D.Tex. 2009) Based on theauthorities cited by Cameron, the court concludes that a patent claim is not finally determined to be valid and patentable, 35 U.S.C. 315(c), in an inter partes reexamination proceeding until the USPTO issues a reexamination certificate Certificate issues after Article III appeals exhausted 11

12 In re Translogic Technology 504 F.3d 1249 (Fed.Cir. 2007) Reexamination can nullify verdict Both cases were on appeal at the same time Fed Cir affirmed reexam and remanded district court case for dismissal If reexam appealed ldlater, would injunction be lifted? 12

13 In re Swanson 540 F.3d 1368 (Fed.Cir. 2008) Office may consider during reexamination the same issue of validity as a prior fd federal court case Reexam requests now often filed late in the case as second bite Lift injunction? Nullify ongoing royalties? 13

14 Amado v. Microsoft 517 F.3d 1353 (Fed.Cir. 2008) Denial of relief from judgment on basis of disclaimer by plaintiff during reexamination of patent filed by defendant Precedent requires es defendant e da to be faultless in the delay Defendant delayed in filing reexam request, waited till after trial to file reexam request 14

15 Recent Lessons from the Front Don t try to tell your litigation story Examiners sometimes use narrower construction than courts How exactly would references be combined by a POSITA? 132 declarations In an IPR, get your art in early (R.948) 15

16 Legislation Amended S.515 changes IPR into 1 year proceeding before APJ First window only Estoppel provision back in Applies to all patents 16