“Past Damages” and Reexamination for Mature Patents

An earlier post discussed the impact of amendments in reexamination, but there are some dynamics we should explore for “mature” patents.  A mature patent is an old patent that is close to expiration.  (For example, a patent that has less than 5 years of patent term before expiration.) 

When a patent is asserted late in its life, the patent can expire before a reexamination final decision is rendered.  That is because the patent reexamination and appeals can take more than 5 years in some cases.  If the litigation is “stayed” pending the outcome of the reexamination, then a court will use the outcome of the reexamination to simplify issues for the litigation.

Patent owners with a patent that expires during the reexamination really want at least one infringed claim to survive reexamination without substantive amendment to keep the possibility of past damages alive.  Future damages are not on the table, because the patent expired during the time the patent was in reexamination.

Potential infringers want just the opposite;  they want every claim to be substantively amended in the reexamination (or better yet, cancelled).  They don’t need to worry about future damages on an expired patent.

So for mature patent assertion situations, defendants want:  (1) reexamination, (2) a stay, and (3) substantive amendment of all asserted claims.  Of course, none of these things can be guaranteed.  And it is possible that the reexamination may render the claims stronger for the patent owner if not properly conducted or the prior art is weak.

And this raises another question:  What is the value of an intermediate (nonfinal) determination in a patent reexamination?  We will explore that in future posts.

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