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Post-Trial Re-examination

By Zachary Silbersher

A patent always faces the threat that it could be invalidated on re-examination. Yet, for a patentee who has already sued for infringement, won a jury verdict, and obtained a judgment for damages, does a subsequent re-examination pose an equal threat to that award? What if the patent is not necessarily invalidated, but claims on which infringement was found at trial are narrowed, no longer justifying the jury's findings? Even if past damages cannot be set aside, can a re-examined patent extinguish an infringer's obligation to pay future royalties? In sum, to what extent does re-examination equip an infringer who loses in court with the additional opportunity, aside from an appeal, to escape liability.

Re-examination provides an avenue of defense to those facing liability. Both ex parte and inter partes re-examination permit a third party, who is neither the patentee nor the assignee, to petition for a patent's re-examination provided a substantial new question of patentability exists. 35 U.S.C. ” 302, 311. Congress intended the re-examination statute to empower private actors to correct patents that were erroneously issued by the PTO. H.R. Rep. No. 107-120 (2002); see also In re Swanson, 540 F.3d 1368, 1375 (Fed. Cir. 2008). Accordingly, claims cannot be enlarged through re-examination, but only invalidated or narrowed in scope. 35 U.S.C. ' 305. Persons who are therefore likely to seek re-examination include potential and existing licensees, infringers, or litigants. M.P.E.P. ' 2612.

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