Gaming the System: Invalidating Patents in Reexamination after Final Judgments in Litigation


Congress enacted patent reexamination statutes in 1980 granting the United States Patent and Trademark Office (“PTO”) the power to review the validity of previously issued patents. Congress hoped to strengthen the presumption of validity for patents by granting the PTO a second opportunity to expunge erroneously issued patents. Additionally, Congress hoped that reexamination would provide an efficient and inexpensive alternative venue to litigating validity in the courts.

Congress, however, did not explain completely the interplay between reexamination and litigation. Since then, the Federal Circuit interpreted the law to strengthen reexamination procedures including granting the PTO the power to invalidate a patent in reexamination even after the patent was held valid in federal court proceedings.

Litigants have been paying attention and have used the parallel paths offered by the Federal Circuit to take two bites at the apple. In two recent decisions, the Federal Circuit blessed the power of a defendant to invalidate a patent in reexamination after failing to do so at trial, over sharp dissent from Judge Newman. These decisions highlight the need for Congress to step in and reform the reexamination statutes to level the playing field in patent disputes.

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