From time to time, large corporations get together to discuss topics of mutual interest, such as creative accounting, the creation of worthless securities, sending jobs to low-wage foreign countries, circumventing the anti-trust laws, and defeating righteous claims of patent infringement. It is this last topic that we shall briefly address here.
The latest fad in patent infringement defense tactics is patent re-examination. You gather up any prior art which happens to be lying around and send it off to the PTO which, for a purely nominal fee, will tie up the patent for a period measured in years. Simple and cost-effective. Not, however, without certain risks which arise out of the possibility that the patent owner will prevail in the re-examination.
“That which doesn’t kill me, makes me stronger.” A patent which survives re-examination – a so-called “twice-blessed patent” – has a strong effect on a trier of fact, be it a judge or a jury. “On TWO SEPARATE occasions, the IMPARTIAL EXPERTS at the Patent Office have decreed that this patent was properly issued. Their REPEATED decisions can only be overturned by you on CLEAR AND CONVINCING EVIDENCE.” Do you really want to face a closing argument like that?
Further, the re-examination proceeding affords the patent owner the opportunity to add patent claims specifically directed to the accused product or service. Do you really want to be arguing non-infringement of a patent claim which is so close that it could serve as a blueprint for your product?
Moreover, the patent owner may utilize the re-examination proceeding as a means of inserting arguments into the patent prosecution record (the “file wrapper”) which will bolster its position with respect to future claim construction issues.
THE LESSON TO BE LEARNED: As best said by Niccolo Machiavelli, “don’t try to kill the king, unless you’re sure you can succeed.”
Good point. It might be wise for more patent infringement defendants to view re-examination as a last-ditch effort. If they're lucky, by then the plaintiffs might get worn down and opt to settle.