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Dan
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Breadcrumbs - In re Etter holds that the Office is not bound by a patent's statutory presumption of validity when the Office reexamines patent claims. In re Etter, 756 F.2d 852, 858 (Fed.Cir.1985) (in banc) (“We hold, therefore, that Sec. 282 has no application in reexamination proceedings.”). Which, I get it, does not mean that the patent loses it validity presumption in court even if the patent is being reexamined. See http://www.altlaw.org/v1/cases/410656 for the case.
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Ned, Breadcrumbs -- Wow. I goofed, plain and simple, by discussing 35 USC 318. As noted, the patent owner, not the alleged infringer, may seek a stay once an inter partes reexam is initiated. Sorry. As for ex parte reexams, though, In re Etter and the CFR cite provide, I still think, good law to argue that once a reexam is initiated a finding of willful infringement is off the table. Granted both are directed to how the Office conducts a reexam. But what purpose does the CFR language serve once the Office finds that a substantive new question of patentability exists? If the Office believes a prima facie case of unpatentability can be made against the patent claims it issued even BEFORE any of the unconsidered prior art is evaluated, then why should a court -- or an alleged infringer -- give weight to the presumption that those claims are valid once a reexam is initiated? Perhaps the courts should look to the CFR language to evaluate whether an infringement was willful. Something like: “An infringement is not willful if the information submitted by an alleged infringer in a reexamination request compels the conclusion that the asserted claim is unpatentable under the preponderance of evidence even if that evidence had not yet been considered by the Office.” If the Office can reach that conclusion why shouldn’t an alleged infringer also be permitted to reach that conclusion (which may be wrong, of course, but it should be a defense to a willful infringement finding).
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Let's not reinvent the wheel. When an inter partes reexamination is initiated, 35 USC 318 states that a patent owner may obtain a stay of litigation UNLESS the court determines that a stay would not serve the interests of justice. That seems to create a presumption in favor a stay and shifts the burden onto the patent owner to show that litigation should continue. As for ex parte reexams, In re Etter is still good law which holds that the statutory presumption of validity afforded to patents does NOT apply during reexamination. If you marry that with 37 CFR 1.555(b)(2) which states that "[a] prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence ... and BEFORE any consideration is given to evidence which may be submitted ..." you go a long way toward persuasively arguing that a mere finding by the Patent Office of a “substantial new question of patentability” is enough to stay an action attempting to enforce the allegedly invalid claim. We shouldn’t stray too far from the affirmative law that instructs marketplace participants that when the Patent Office concludes a second look at a patent is warranted they are reasonably safe from suit until that second look is concluded. In short, if the validity bubble is burst by the Patent Office, how can the alleged infringer willfully infringe the questionable patent?
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