Submitted by patentadmin on Fri, 09/03/2010 - 15:42

An increasingly common tactic among those accused of patent infringement is to seek re-examination of the subject patent or patents. This may occur even while litigation is proceeding in a district court, leading to the possibility that a jury finds the patent valid and infringed while the Patent Office, shortly thereafter, finds the same patent invalid. What happens then? (Flexiteek Americas, Inc. et al. v. Plasteak, Inc. et al.)

Flexiteek sued Plasteak for patent infringement. In its Answer to the Complaint, Plasteak raised the affirmative defenses of anticipation, obviousness and inequitable conduct. However, despite repeated demands, it failed to identify the basis for these defenses. As a result, the Court granted summary judgment dismissing the defenses of anticipation and obviousness.

The case then went to a jury on the sole issue of infringement. The jury also found in favor of Flexiteek, awarding damages of $79,632. The judge then held a bench trial on the question of inequitable conduct. He found that the patentee had withheld material information from the Patent Examiner, but that Plasteak had failed to show that this was done with an intent to deceive. No inequitable conduct. The Court then entered a permanent injunction barring Plasteak from producing or selling any product that infringed the patent-in-suit.

So much for the background. This is where it gets interesting. While the litigation was pending, Plasteak had petitioned for re-examination of the patent-in-suit. Shortly after the Court entered the permanent injunction, the Patent Office issued a Final Office Action in the re-examination, rejecting the only asserted claim of the patent-in-suit on the grounds that it was both anticipated and obvious. As might be expected, Plasteak lost no time in seeking a stay of the injunction.

While their request was pending, Plasteak filed a copy of another Patent Office document with the Court. This was an Advisory Action, which notified Flexiteek that its response to the previous Final Office Action did not overcome the claim rejections. At this point, Flexiteek was faced with two choices: abandon the patent or appeal to the Patent Office Board Of Appeals.

In responding to Plasteak’s motion for a stay of the injunction, Flexiteek argued that since they still had the right to appeal, the Final Office Action “cannot operate as a final adjudication.”

Not so, held the Court. “The PTO and the Courts employ different standards of proof when considering validity … In fact, during the reexamination, Plaintiffs raised this Court’s decision to the PTO … the PTO’s Advisory Action is not only the most recent decision regarding the … Patent’s validity, it is a decision made after a thorough examination of the matter conducted by a body which holds particular expertise in such issues. Accordingly, the Court finds that the PTO’s determination should control and the Court will terminate the Permanent Injunction.”

THE LESSON TO BE LEARNED: A PTO finding of invalidity, even if still subject to appeal, trumps a Court holding that the patent was valid.

Submitted by Anonymous (not verified) on Mon, 09/13/2010 - 20:00


Re-examination is a blessing in that, not only does it give defendants another avenue for fighting bad patents, but it also has the potential to drastically reduce the amount of unnecessary and prolonged patent litigation ... which might sometimes be the best thing for the parties, if not necessarily for their lawyers.

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