Reexamination Profile

Contact: Ed Schlatter or Brent Babcock

As a comprehensive intellectual property law firm with expertise in client counseling and litigation, Knobbe, Martens, Olson & Bear, LLP is uniquely positioned to assist its clients in reexamination proceedings before the United States Patent and Trademark Office (PTO). In a reexamination proceeding, an issued U.S. patent is reexamined on the basis of patents or printed publications submitted either by the patent owner or by a third party.  After a request for reexamination is filed, the PTO must first find that the submitted patents and/or printed publications raise a substantial new question of patentability compared to what was considered in the original examination of the patent.  If the PTO makes that finding, the PTO then reexamines the claims of the issued patent.  The reexamination procedure results in the claims of the issued patent being confirmed, amended, or canceled.  A typical reexamination takes about two to three years, and the initial determination as to whether a substantial new question of patentability exists is usually made within three months of filing.

Reexaminations proceed either ex parte or inter partes.  An ex parte reexamination is requested either by the patent owner or a third party.  The patent owner might choose to seek ex parte reexamination of its own patent to have additional prior art considered that was not before the patent Examiner in the original prosecution.  A third party might request ex parte reexamination of a patent that raises an issue of potential infringement, seeking a determination that the patent claims are invalid.  One advantage of an ex parte reexamination is that the third party need not identify itself.  A disadvantage of ex parte reexamination is that the third party’s involvement is limited primarily to the request for reexamination itself.  After the reexamination is initiated, the third party will not have an opportunity to respond to statements made by the patent owner.  Thus, the patent owner may still be able to convince the patent Examiner to allow the claims of the patent over the submitted prior art with minimal amendment to the claims.

An inter partes reexamination can only be requested by a third party and are only available for patents that are issued from applications filed on or after November 29, 1999.  Inter partes reexamination allows the third party to participate in the entire reexamination process and respond to statements made by the patent owner.  Third-party participation helps explain the greater success seen in invalidating patent claims through inter partes reexamination than in ex parte reexamination (53% of inter partes vs. 12% of ex parte cases brought before the PTO). Unlike an ex parte reexamination request, however, an inter partes reexamination request must identify the real party in interest.  The inter partes reexamination is also more costly.  Filing fees for inter partes reexamination are currently $8,800, while filing fees for ex parte reexamination are $2,520, not including attorneys fees.  A further drawback of an inter partes reexamination is that, following a final decision (including any appeals), the third party, and those in privity with it, are precluded from litigating issues that were raised or could have been raised in the reexamination.

Knobbe Martens serves clients with diverse budgets and can determine how a reexamination can best achieve the client’s strategic goals.  As reexamination can be requested at any time during litigation, it is not surprising that about sixty percent of reexamined patents are also involved in litigation.  Reexaminations generally cost less than patent litigation because reexamination proceedings are limited to issues arising because of prior patents and printed publications.  To further limit costs, a party might decide to proceed ex parte rather than inter partes, thereby avoiding expense of continued participation in the PTO’s examination of the patent following the grant of a request for reexamination. 

Knobbe Martens also counsels clients on how to use reexamination to advance both offensive and defensive goals.  Offensively, a patent owner may use the reexamination process to strengthen a patent’s validity prior to litigation or to preempt an attack on a patent.  Defensively, reexamination presents an opportunity to defer litigation costs while challenging a patent’s validity or to gain leverage during licensing negotiations.  Even if litigation commences, a successful defensive reexamination request early in the case can result in a stay of the infringement litigation, which facilitates settlement and licensing discussions while minimizing and/or deferring client expenses. 

Representative Reexamination Clients:

Kontron America, Inc.

The firm represented Kontron America, Inc. in litigation and successfully requested an inter partes reexamination of the patent asserted against Kontron in federal court.  Kontron designs and manufactures embedded computer systems in Europe, America, and Asia.  Epicenter, Inc. alleged that Kontron infringed Epicenter’s U.S. Patent No. 6,609,034 on a computer control switching system.  In 2006, Kontron was able to successfully secure a stay of the litigation pending the outcome of the reexamination.  During reexamination, the examiner’s rejection based on grounds cited by the firm forced Epicenter to submit narrowing amendments of the ’034 patent.

Johnson Safety, Inc.

The firm successfully defended Johnson Safety, Inc. in a reexamination proceeding in front of the United States Patent and Trademark Office (PTO).  Johnson Safety manufactures audio and video equipment.  Audiovox Corporation requested an inter partes reexamination of a Johnson Safety patent on a mobile video system.  The firm’s representation in the reexamination resulted in a confirmation by the Examiner that all claims in the patent are valid. The Examiner’s decision is currently being appealed by the requester.

Romer, Inc.

The firm successfully defended Romer, Inc. in an ex parte reexamination proceeding in front of the PTO.  Romer, a Hexagon Metrology Company, manufactures innovative portable metrology solutions to customers worldwide.  Faro Technologies, Inc. requested an ex parte reexamination of a Romer patent on a spatial coordinate measuring device.  The firm’s successful representation in the reexamination resulted in the PTO’s confirmation that all claims in the patent are valid.

Reexamination Lawyers:

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