35 U.S.C. § 315(c) is the well known and oft-cited civil action estoppel provision of the codified inter partes reexamination laws (35 U.S.C. §311 et seq.). Section 315(c) prevents an adverse party (i.e., a third party requester) from seeking district court review of the same validity questions presented in the inter partes reexamination proceedings. Specifically, section 315(c) provides that a third-party requester is estopped from asserting at a later time, in a civil action under 28 U.S.C. § 1338, 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.”
Until the creation of the Central Reexamination Unit (CRU) and its “patent killer” reputation, section 315(c) was often identified by defense counsel in district court litigation as a primary reason for third parties not to request inter partes reexamination. ITC litigators have not shared the concerns of district court litigators because application of section 315(c) is restricted to “any civil action arising in whole or in part under section 1338 of title 28 ….” 28 U.S.C. 1338(a) provides:
The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.
However, should ITC litigators be concerned with the uncodified forgotten cousin of section 315(c) — i.e., section 4607 of the American Inventors Protection Act (AIPA)? Section 4607 of the AIPA provides:
Any party who requests an inter partes reexamination under section 311 of title 35, United States Code, is estopped from challenging at a later time, in any civil action, any fact determined during the process of such reexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination decision. If this section is held to be unenforceable, the enforceability of the remainder of this subtitle or of this title shall not be denied as a result. (1)
Unlike 35 U.S.C. §315(c), section 4607 of the AIPA does not expressly restrict application of the estoppel to district court civil actions relating to patents. Rather, section 4607 of the AIPA seemingly applies to any civil action. Thus, the rub — is a determination by the ITC under 19 U.S.C. §1337(c) a civil action?
Probably not. In SSIH Equipment, S.A. v. United States International Trade Commission, 718 F.2d 365, 371, 218 USPQ 678, 684 (Fed. Cir. 1983), the Federal Circuit stated its belief that the term “‘civil action’ … does not embrace the proceedings before the [International Trade] Commission.” In light of the Federal Circuit’s dicta, a respondent in ITC litigation should consider the pros and cons of requesting inter partes reexamination on a case-by-case basis with little or no concern that estoppel provisions (codified or uncodified) will limit any of their potential defenses. (2)
Although an exclusion order at the ITC is the goal of patent owners, successful and/or settling parties should be aware that a subsequent challenge of the patent via inter partes reexamination, on the same art, may still be available to the respondents because of the absence of an applicable estoppel. Specifically, 37 C.F.R. 1.907 (b) provides:
Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination…..
ITC respondents should consider the availability of inter partes reexamination as a bargaining chip to leverage settlement discussions. Once initiated, the USPTO will not terminate the proceedings. However, the third party requester may stop participating, thus improving the patent owner’s chances of a favorable termination. Likewise, a settlement prohibiting a later inter partes reexamination may be highly desirable.
With the creation of the CRU at the USPTO, an emphasis has been placed on improving the efficacy of patent reexamination. Currently, patent reexamination is increasingly leveraged as a concurrent track to litigation. Careful consideration should be accorded to reexamination as a tactical option for ITC respondents.
(1) Emphasis added. This latter provision is evidence that Congress had reservations concerning whether the language of section 4607 is unconstitutionally vague and hence could be held unenforceable as such. This may have also been the reason that section 4607 was never codified in title 35 of the United States Code. For example, the estoppel is not limited to final inter partes reexamination determinations. On its face, it could apply to any finding of fact adverse to the position of the third party requester at any stage of the proceeding even at a time prior to the third party exercising an independent right to an appeal to the Board of Patent Appeals and then to the Federal Circuit. This raises a question as to whether such estoppel provision would violate third parties’ rights to due process.
(2) Of course, ex parte reexamination is a further option for those patents which do not meet the date provision for inter partes reexamination.