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Re-examination: The Tail that Wags the Dog

By Robert M. Asher

IP litigators appear to have blinders on when it comes to patent re-examination. All eyes are focused on winning the big event, the courtroom victory. To have the verdict upheld on appeal garners the ultimate win. While chasing the big dog of litigation, parties may be overlooking the power that can be wielded by the U.S. Patent and Trademark Office (“USPTO”) in a re-examination proceeding.

The $500 million verdict in the Eolas v. Microsoft case is threatened by a USPTO re-examination of the patent-in-suit. A similar cloud hangs over the $55 million verdict in the NTP v. Research in Motion case involving the Blackberry handheld device. When it comes to patent litigation, the USPTO should not be overlooked. This is not new. On Nov. 6, 1989, Gencor Industries, Inc. appealed a jury's award of $6 million for patent infringement damages. At the time of the appeal, the patent-in-suit was the subject of a re-examination proceeding in the USPTO. By May of 1991, the Board of Patent Appeals upheld a rejection of the claims. The Federal Circuit offered to consider staying the litigation in view of the re-examination. Both parties declined the invitation.

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