Q) Federal Court Decisions binding for Office (4.00.19p)

by patentbar on August 25, 2008 · 17 comments

in Exam Questions

19. Which of the following is true?
(A) A final decision by a United States District Court finding a patent to be invalid
will have no binding effect during reexamination since the PTO may still find the
claims of the patent to be valid.
(B) A final decision by a United States District Court finding a patent to be valid will
have no binding effect during reexamination since the PTO may still find the
claims of the patent to be invalid.
(C) Once the Court of Appeals for the Federal Circuit determines that the claims of a
patent are valid, the USPTO may not find such claims invalid based upon newly
discovered art.
(D) If a patentee fails to disclose prior art to the PTO during regular prosecution, the
only way that a patentee can disclose later discovered prior art to the PTO after
issuance is by filing a request for reexamination.
(E) Once a patent claim is found valid during a District Court Proceeding then the
patent claims are entitled to a higher standard of patentability and the presumption
of validity can only be rebutted by clear and convincing evidence in a concurrent
or later reexamination proceeding.

19. ANSWER: (B) is the most correct answer. As to (A) and (B) see MPEP 2286, page 2200-
97, stating, “[t]he issuance of a final district court decision upholding validity during a
reexamination also will have no binding effect on the examination of the reexamination.” Thus,
(A) is incorrect because a final holding of invalidity is binding on the PTO. As to (C), the PTO
may discover new art and find claims unpatentable as that art would raise a substantial new
question. MPEP §§ 2216 and 2286. As to (D), the patentee could file a prior art statement under
35 U.S.C. § 301, or disclose prior art in reissue application if the original patent (through error
without deceptive intent) is defective or claims more or less than should be claimed. As to (E),
preponderance of evidence standard does not change in reexamination proceedings. MPEP 2286.

1 patentbarNo Gravatar September 2, 2008 at 12:37 pm

One was about the extent to which a Federal Court decision was binding on the Office: if the Court finds it not invalid, or if the Court finds it invalid, etc.

2286 Ex Parte Reexamination and Litigation Proceedings
The issuance of a final Federal Court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination. […] The Office is not bound by a court’s holding of patent validity and should continue the reexamination. The court notes that district courts and the Office use different standards of proof in determining invalidity, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a district court must be shown by “clear and convincing” evidence, whereas in the Office, it is sufficient to show nonpatentability by a “preponderance of evidence.” Since the “clear and convincing” standard is harder to satisfy than the “preponderance” standard, deference will ordinarily be accorded to the factual findings of the court where the evidence before the Office and the court is the same. If sufficient reasons are present, claims held valid by the court may be rejected in reexamination.

On the other hand, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the reexamination. The reexamination will continue as to any remaining claims.

RDS (Dec 9, 07) See Q19 PM, April 2000, Answer B which is correct

2 ELSNo Gravatar March 7, 2011 at 11:55 am

Saw this one yesterday.

3 OverworkkedNo Gravatar April 28, 2011 at 3:18 pm

Repeat or close variant on 4/27/2011 MPEP E8R8

4 BeckerNo Gravatar May 17, 2011 at 3:38 pm

I got this question 5/16/2011.

5 ohsoobviousNo Gravatar May 25, 2011 at 3:01 pm

i had a close variant of this on 5/18/11

6 Big Bad Voodoo DaddyNo Gravatar June 3, 2011 at 12:42 pm

Regarding this question however – the difference in the district and federal courts is not accounted for in the answer, because in my understanding the validity opinion of the district court will not matter, since it is not binding upon the pto.

7 FredsNo Gravatar June 4, 2011 at 4:32 am

I think the district/Fed.Cir distinction is a red herring. If you understand collateral estoppel and issue preclusion, this rule is easy despite so many variations. Basically, Court’s validity finding of a patent cannot be used to preclude PTO from the patent invalid on other grounds, but court’s invalidity finding is final such that the patent is invalid. Think that for a minute, that should make perfect sense.

8 RemandedNo Gravatar September 18, 2011 at 8:21 pm

Got a close variant to this one today, 18 September 2011.

9 AnonNo Gravatar October 12, 2011 at 12:07 am

Close variant om 10/11/11

10 JeremyNo Gravatar October 18, 2011 at 4:09 pm

I had this question today 10-18-11, however the wording of the correct answer was modified to “not invalid.” The answer remains the same, though the wording was cause for pause.

11 RemandedNo Gravatar January 20, 2012 at 7:54 pm

Saw this one today. The correct answer was still B, but it was written in the double negative (not invalid).

12 MnGirlNo Gravatar March 20, 2012 at 11:56 pm

Got this one verbatim. Easy point. Answer was the choice where it said the court held the patent invalid, but USPTO could still find the patent invalid.

13 TheGhostOfBilskiNo Gravatar April 5, 2012 at 8:04 pm

MnGirl I think you mean the Court held patent *valid* or *not invalid*, but USPTO could still find patent invalid.

14 JAYNo Gravatar June 26, 2012 at 2:59 am

I got the same one 06/25/12. Although the court held the patent valid, somebody is trying to make it invalid.

15 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:30 pm

Got a variant but the question was looking for an answer that was NOT TRUE. Since the answer to this was given as a true statement I picked that one. I don’t remember what the answer was.

16 Pass 8/13No Gravatar August 14, 2012 at 10:45 am

I had the NOT true one, also.

17 ZNo Gravatar March 31, 2013 at 1:06 pm

VARIANT on 3/30/13.

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