Tuesday, August 4, 2009

Inter Partes Reexamination Estoppel does not Arise Until Reexamination Certificate Issues

The court denied plaintiff's motion for summary judgment that defendant was "estopped under 35 U.S.C. § 315(c) from asserting in this action that the ‘605 patent is invalid based on grounds that [defendant] asserted or could have asserted in the inter partes reexamination proceeding" because the reexam proceeding remained ongoing. "Neither party cites any case, and the court could not locate one, in which a court has determined when an inter partes reexamination becomes final for the purposes of § 315(c), thereby triggering its preclusive effect. . . . [T]he court concludes that a patent claim is not 'finally determined to be valid and patentable,' 35 U.S.C. § 315(c), in an inter partes reexamination proceeding until the USPTO issues a reexamination certificate."

Safoco Inc. v. Cooper Cameron Corp., 4-05-cv-00739
(TXSD July 31, 2009, Memorandum Opinion & Order) (Lake, J.)

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