Last month I wrote about how the Federal Circuit overturned a patentee’s $29.4 million infringement verdict and held that canceling dependent claims in a reexamination without changing the language of the independent claims narrowed the claim scope due to intervening rights. Marine Polymer v. Hemcom. Since then the Federal Circuit has issued an additional opinion pertaining to concurrent district court and PTO proceedings.
The recent case of Bettcher Industries, Inc. v. Bunzl USA pertained to a concurrent inter partes reexamination and district court case and the effect of 35 U.S.C. § 315(c). 35 U.S.C. § 315(c) states in pertinent part:
[a] third-party requester whose request for an inter partes reexamination results in [reexamination]…is estopped from asserting at a later time, in any civil action…the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.
In Bettcher the accused infringer instituted inter partes reexamination proceedings and the validity of the claims was upheld by the Examiner and Board of Appeals. The patentee argued to the district court that the accused infringer should now be precluded from relying on the same prior art that was considered in the reexamination. In a case of first impression, the Federal Circuit held on October 3rd that the estoppel provisions in 35 U.S.C. § 315(c) do not take effect until the conclusion of all appeals, including any Federal Circuit appeals. Thus, the Bettcher case differs from last month’s Marine Polymer case. In Marine Polymer the patentee’s arguments in a pending, non-final reexamination adversely impacted the patentee’s co-pending district court case. Here the reexamination patentee’s district court case will not be affected by the inter partes reexamination until the exhaustion of all appeals including a Federal Circuit appeal.
As a practical matter the Bettcher case means that it may take roughly six years from the inception of an inter partes reexamination before any estoppels provided for by the statute take effect. That is currently the average time it can take to navigate a PTO inter partes reexamination through to a final Federal Circuit decision. Fortunately, the new America Invents Act will lessen this time since estoppel is to take effect when a Board decision is delivered at the PTO as opposed to after final Federal Circuit review. However, the inter partes review provisions of the America Invents Act do not take effect until September 16, 2012. Therefore, practitioners involved in PTO reexaminations and district court litigations will have to continue to fully and carefully coordinate the PTO and litigation strategies and their respective timing to optimize the chances for success at both the PTO and district court.