The Advantages of Inter Partes Reexamination

Abstract

Among patent lawyers, it is a widely held view that recommending an accused infringer seek inter partes reexamination borders on legal malpractice. Contrary to this view, I argue in this article that inter partes reexamination is frequently the best option for an accused infringer.

Compared to litigation, inter partes reexamination is less costly, offers infringers the ability to obtain a favorable resolution quickly if the patent is invalidated, defers an unfavorable resolution until a judgment of infringement is entered, and provides relatively skilled decision-makers. Substantively, inter partes reexamination allows accused infringers to contest validity on equal ground, without a presumption of validity, and with the broadest possible claim construction. Finally, accused infringers benefit from an information advantage in reexamination, because the patentee will lack discovery regarding the accused product, and may unwittingly make a fatal prosecution disclaimer due to lack of information.

The fear of inter partes reexamination is driven almost entirely by the fact that a losing party is precluded from recontesting validity in litigation. The fear of the estoppel, however, is overblown when all estoppel does is impose a "single bite at the apple" requirement. Accused infringers are merely faced with a choice: either contest validity before the PTO examiner, or contest validity before the patentee's cherry-picked jury, usually in Marshall, Texas. Once the choice is starkly articulated and rationally considered, is unlikely that many accused infringers will choose to forego the opportunity to contest validity in the PTO in favor of litigating in the Eastern District of Texas.

Keywords: inter partes reexamination

JEL Classification: K11