This article was originally published in the Union Leader and can be found here.
NH Legal Perspective: Increasing Effectiveness of Patents in Patent Litigation
By: Peter Nieves
December 28. 2019
Patent litigation is costly. While patents can be used for many purposes, one of the most common is to stop others from making, using, selling or importing a technology or method.
Patent litigation also provides the potential for significant reward, including financial reward, injunctions, and more. The combination of high cost and potential for significant reward makes deciding whether to proceed with patent litigation a crucial business decision.
Unfortunately, many potential plaintiffs do not perform necessary due diligence prior to filing suit, often resulting in painful and embarrassing patent invalidity proceedings and cases ending with an early decision on a motion to dismiss or motion for summary judgement.
Over the last eight years or so, the scales in patent litigation have tipped a bit more in the defendant’s favor with defensive weapons such as the post grant review (PGR), inter partes review (IPR), and ex parte reexaminations, all of which are challenges to an issued patent.
It is beneficial to increase chances of success in patent litigation prior to filing a complaint. Imagine a way to modify issued patent claims to increase chances of patent infringement, or simply to increase the chances of maintaining patent validity after assertion of a patent against another party. One such way is by using the reissue procedure before the United States Patent and Trademark Office (USPTO).
Briefly, the reissue procedure allows a patent owner to correct patent errors and modify patent claims to define over newly obtained prior art that might invalidate the issued patent after assertion. If the patent owner becomes aware of prior art publications that likely would result in invalidation of its patent in an invalidation procedure, but knows that patent claims can be rewritten to define around the prior art based on disclosure within the specification (disclosure), the patent owner can file for reissue.
During the reissue proceeding, the patent owner can disclose the prior art known and submit new claims for the patent that define around the known prior art, and at the same time design the claims to maintain potential infringement by a known party, thereby exponentially decreasing chances of that prior art being used to invalidate the patent during patent litigation and increasing chances of successful patent enforcement.
In addition, if the combination of elements A, B, and D is described within the specification (or description) of the patent, but the combination just did not make it into the claims, the patent owner could file for a reissue proceeding before the USPTO and modify the claims to ensure that the combination of elements A, B, and D is within the claims, and should the patent owner be successful, the chances of winning in patent litigation would increase exponentially.
The patent reissue proceeding does have certain strict requirements that must be followed. The patent owner must specify at least one error in the patent for a patent reissue proceeding to take place. In addition, if a patent owner is attempting to broaden patent claim coverage, a request for patent reissue must be filed prior to two years after patent issuance. Further, claim scope previously surrendered during patent prosecution to obtain the issued patent cannot be recaptured.
Defensively, an early action that should take place when threatened with patent infringement is determining if there is patent infringement based on the claims within the patent, as well as performing a patent invalidity search to see if there is invalidating prior art. A solid prior art reference can scare a patent owner away due to the threat of losing a current or potential royalty stream. In addition, a solid prior art reference can be used to file an early IPR or ex parte reexamination followed by a motion to stay the litigation with institution of either.
Warning: Use of reissue proceedings may result in waiting several years for the USPTO to render a decision, potential loss of damages prior to newly allowed patent claims, and the potential for losing rights to all issued claims within the patent. Those considering use of reissue proceedings should consult with their licensed patent attorney and if part of a litigation strategy, a patent litigator who is also a licensed patent attorney.