By Todd Baker
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Feb
24
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. 




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By Eric Schweibenz
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Feb
23
On February 20, 2009, ALJ E. James Gildea issued an order setting April 22, 2009 for a technology tutorial and Markman argument in the matter of Certain Laser Imageable Lithographic Printing Plates  (Inv. No. 337-TA-636).

Regarding technology tutorials, ALJ Gildea states in the order that “brief technology tutorials will be useful in setting the stage for the hearing.  Complainant and Respondents will be permitted 30 minutes per side to present the technology at issue in this Investigation.  Legal argument during said presentations will not be permitted.”


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By Tom Fisher
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Feb
19
On February 18, 2009, ALJ Robert K. Rogers, Jr. issued an order denying complainant Saxon Innovations, LLC’s  (“Saxon’s”) motion to amend its complaint to add Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP (collectively “Samsung”) as respondents in the matter of Certain Electronic Devices, Including Handheld Wireless Communications Devices (Inv. No. 337-TA-667).

Saxon has been litigating a separate patent infringement suit against Samsung in the Eastern District of Texas since October 2007, and the parties have been in settlement negotiations since December 2007.  In its motion to amend its complaint in the ITC, Saxon claimed that several months prior to filing the complaint, it notified Samsung of its intent to include Samsung as a respondent.  Saxon stated that it agreed to refrain from adding Samsung as a respondent as long as the parties continued working towards a settlement in the district court case.  However, since Samsung had allegedly expressed concern regarding any delay in commencing the investigation, Saxon now needed to add Samsung as a respondent.


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By Barry Herman
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Feb
19
On February 18, 2009, ALJ Robert K. Rogers, Jr. issued an order in the matter of Certain Base Stations and Wireless Microphones (Inv. No. 337-TA-653) denying the joint motions of complainant L-3 Communications Mobile-Vision, Inc. and respondents KCi Communications, Inc., Digital Ally, Inc., and Trinus Systems, Inc. to terminate the investigation as to those respondents based on settlement agreements with the complainant. 

The parties sought to withhold the terms of their settlement agreements from the other respondents in the investigation by not submitting the settlement agreements with their joint motions to terminate – they instead sent the settlement agreements directly to ALJ Rogers under separate cover.  ALJ Rogers held that this violated the clear mandate of Commission Rule 210.21(b)(1), which requires that “a motion for termination by settlement shall contain copies of the licensing or other settlement agreement.”  He denied the motions to terminate without prejudice.


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By Barry Herman
|
Feb
19
On February 17, 2009, Samsung Electronics Co., Ltd. of Korea and Samsung Electronics America, Inc. filed a complaint requesting that the ITC commence an investigation pursuant to section 337.

The complaint alleges that Eastman Kodak Company imports into the U.S. (in addition to sale for importation into the U.S. and/or sale within the U.S. after importation) digital cameras that infringe certain claims of U.S. Patent No. 5,731,852 and U.S. Patent No. 6,229,695.  According to the complaint, the ‘852 patent “improves on the prior art recording devices by allowing a variable-length audio file, enabling the user to create ‘sound tags’ or ‘voice memos’ that exceeded the fixed file size known in the prior art.”  Further, the complaint alleges that the ‘695 patent relates to a palm-sized camera, and more particularly to the housing encasing the device’s structure that provides “increased impact-resistance.”


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