Nowadays, we usually take into consideration inter partes assessment as a primary choice to problem patentability. Rightly so. However don’t neglect about ex parte reexamination (“XPR”). Even within the IPR period, patent challengers are nonetheless efficiently utilizing XPR to assault patents of suspect validity and even leveraging XPR outcomes into wins in district courts.
A living proof is Golden Eye Media USA, Inc. v. Trolley Baggage UK Ltd., 3:18-cv-02109-BEN-LL (S.D. Cal.). The Golden Eye case arose in 2018, after Defendants filed take-down complaints with Amazon towards Plaintiffs, looking for to bar gross sales of Plaintiffs’ reusable baggage due to alleged infringement of U.S. Design Patent No. D779,828 (“’828 patent”). Bored with business disruptions, Plaintiffs sought declaratory judgment of non-infringement and alleged enterprise tort claims for the tried Amazon takedown. In response, Defendants added their very own design patent infringement declare towards Plaintiffs, based mostly on Plaintiffs’ lately issued U.S. Design Patent No. D835,912 (“’912 patent”). Listed below are the 2 design patents at subject:
Then issues received difficult. Defendants filed an XPR request difficult the ’912 patent in July 2019. And Plaintiffs countered with an XPR request on the ’828 patent in October 2020. Plaintiffs moved for a keep, however the courtroom by no means granted one. In February 2021, Defendants landed the primary blow when the USPTO discovered the ’912 Patent unpatentable in an advisory motion on the next prior artwork:
Then in March 2021, Plaintiffs evened the rating. The district court invalidated the ’828 Patent on summary judgment, discovering it apparent in gentle of prior artwork (and non-ornamental or practical). Golden Eye Media USA, Inc. v. Trolley Baggage UK Ltd., No. 3:18-CV-02109-BEN-LL, 2021 WL 966533, at *8-26 (S.D. Cal. Mar. 15, 2021). Listed below are the ’828 patent and the first and secondary references the courtroom utilized in its obviousness evaluation:
Issues got here to a head for the events in April 2021. On April 14, 2021, the USPTO issued a non-final workplace motion rejecting the ’828 patent. A number of days later, the events notified the courtroom of the USPTO’s selections discovering each patents to be unpatentable in workplace actions.
Dealing with two design patents of questionable validity, the district court ordered the parties to elucidate why it shouldn’t grant abstract judgment of invalidity of the ’912 patent “given (1) the 912 Patent carefully resembles the 828 Patent, which this Court docket ordered held invalid and (2) the USPTO’s determination discovering the 912 Patent invalid.” 2021 WL 2072382, at *2 (S.D. Cal. Could 24, 2021). The events agreed to a consent judgment of invalidity of the ’912 patent, and the courtroom licensed the invalidity judgment on the ’828 patent for attraction. Id. at *8. Whereas Defendants seem resigned to combat the antagonistic rulings on the ’828 patent, Plaintiffs appear able to pack their baggage, waiving their proper to attraction the courtroom’s determination on the ’912 patent and displaying no intention to attraction the USPTO’s advisory motion.
Each Golden Eye events managed to make use of XPR to neutralize asserted design patents. That’s uncommon as of late. Like different ’80s relics, XPR has largely gathered mud as consideration shifted to IPR. However patent challengers can be smart to maintain XPR in thoughts. In contrast to IPR, XPR will be filed any time, has a decrease “substantial new query of patentability” normal for granting assessment, and doesn’t carry potential estoppel results.
Takeaway: Don’t neglect about XPR as an alternative choice to IPR. It could be previous, nevertheless it nonetheless works and even has benefits in some cases. Plus, relying on how issues play out, XPR outcomes may carry important weight in parallel district courtroom litigation.