Post-Trial Re-examination

Re-examination provides an avenue of defense to those facing liability. Both ex parte and inter partes re-examination permit a third party, who is neither the patentee nor the assignee, to petition for a patent's re-examination provided a substantial new question of patentability exists. 35 U.S.C. ” 302, 311. Congress intended the re-examination statute to empower private actors to correct patents that were erroneously issued by the PTO. H.R. Rep. No. 107-120 (2002); see also In re Swanson, 540 F.3d 1368, 1375 (Fed. Cir. 2008). Accordingly, claims cannot be enlarged through re-examination, but only invalidated or narrowed in scope. 35 U.S.C. ' 305. Persons who are therefore likely to seek re-examination include potential and existing licensees, infringers, or litigants. M.P.E.P. ' 2612.

The re-examination statute does not limit its use by infringers against whom liability has already been determined. Nevertheless, courts have proven reluctant to sanction the re-examination process as a runaround to an appeal or a back-door attempt to circumvent a judgment for infringement. The Federal Circuit recently indicated that a judgment should not be set aside even where a claim's scope is narrowed on re-examination and the very basis on which the jury found infringement has been undermined. Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008).