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Patent Re-examination

By Elizabeth Iglesias and Azar Mouzari

There has been a significant surge in recent years in the number of patent re-examination requests filed against patents asserted in litigation. Indeed, re-examination is increasingly being utilized by accused patent infringers as a cost-effective tool to challenge patent validity, derail patent litigation proceedings, and limit the accused infringer's exposure to damages. In light of this trend, strategy considerations for the use of parallel patent re-examination proceedings as a tool in patent litigation are examined below.

Re-examination is a patent office procedure for amending or correcting an issued patent and usually involves reassessment of the patent's scope in view of new information concerning the state of the art at the time the patent application was filed. Patent re-examinations are initiated by a request, typically by a party that has been or may be accused of infringement, to the Patent and Trademark Office (“PTO”) to re-examine specifically identified claims of a patent in light of prior art references. If the request raises a “substantial new question of patentability,” the request is granted and the PTO initiates a re-examination proceeding during which the patent examiner determines if the patent claims should be canceled, amended or confirmed.

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