THE UNIVERSITY OF TEXAS SCHOOL OF LAW

6TH ANNUAL ADVANCED LAW INSTITUTE

Interplay of Claim Construction and PTO Claim Construction During And Concurrent Litigation

January 20 – 21, 2011 Alexandria, Virginia

Kenneth R. Adamo*

JONES DAY North Point 901 Lakeside Avenue Cleveland, Ohio 44114-1116 (216) 586-7120

2727 N. Harwood Street Dallas, Texas 75201 (214) 969-4856 E-mail: kradamo @ jonesday.com

* Member Illinois, New York, Ohio and Texas Bars. This paper reflects only the present considerations and views of the authors, which should not be attributed to Jones Day, or to any of their or its clients (former, present or future). © 2011 Kenneth R. Adamo. All Rights Reserved.

INTRODUCTION

When concurrent, parallel-in-time reexamination proceedings and

litigation is ongoing, the effects of claim construction occurring during the reexamination

proceeding on the litigation, and a Markman/Phillips ruling/decision in the litigation on the reexamination proceeding, may require consideration.

A claim construction in the reexamination proceeding in the PTO is part of the prosecution history; as such, it is intrinsic evidence which Phillips requires be considered by the trial court during the Markman/Phillips construction process, irrespective of the other differences

between patent reexamination and the litigation process (burdens of proof and the like). Timing

issues might, however, present challenges to efficient consideration in a particular case.

A trial court claim construction through Markman as applied per Phillips is not binding in the reexamination proceeding. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir.

2007). Lack of “binding” effect, however, does not end the inquiry, nor demarcate what consideration the PTO may/should give that Markman/Phillips ruling/decision in the reexamination proceedings.

REEXAMINATION BASICS

To ground the pertinent discussion, a review in summary of certain inter partes and ex

parte reexamination issues is informative.

INTER PARTES REEXAMINATION AND LITIGATION

In discussing the policies implicated in deciding whether a substantial new question of exists in an inter partes reexamination context, MPEP 2642 states:

III. POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT.

As to A – C which follow, see Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

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A. Final Holding of Validity by the Courts.

When the initial question as to whether the raises a substantial new question of patentability as to a is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present, because of the different standards of proof employed by the Federal District courts and the Office While the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court's decision on validity, because it is not controlling on the Office

MPEP 2600-51 to -52 (Rev. 7, July 2008) (emphasis added).

Where inter partes reexamination proceedings are concurrent, parallel-in-time with litigation, MPEP 2686.04 sets out the PTO procedures at that interface:

IV. FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED

Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding must promptly notify the Office of any Federal Court decision involving the patent.

Upon the issuance of a holding of claim invalidity or unenforceability by a Federal Court, reexamination of those claims will continue in the Office until the decision becomes final. A non-final Court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.

Where an inter partes reexamination proceeding is currently pending and a final Federal Court decision issues after all appeals, the reexamination proceeding is reviewed to see if no substantial new question of patentability remains (as to one or more claims) due to holding of claims invalid, and to determine whether the provisions of 37 CFR 1.907(b) apply as a result of a decision in a civil action arising in whole or in part under 28 U.S.C. 1338.

A final Court holding of invalidity/unenforceability is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the

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