Few law firms surpass Fitch Even’s expertise in handling reissue and reexamination patent proceedings. We have an in-depth understanding of the substantive and procedural requirements unique to these proceedings, especially as an integrated part of representing clients in patent infringement disputes. For decades, Fitch Even lawyers have utilized various post-issuance mechanisms afforded by the U.S. Patent and Trademark Office (USPTO) for the benefit of patent owners, accused infringers, or interested third parties. Our long history in this practice area enables our lawyers to make use of these mechanisms in conjunction with patent litigation to the benefit of our clients, and differentiates our dispute resolution approach from others.
Ex Parte Reexamination Procedures
Fitch Even attorneys are well-versed in ex parte reexamination procedures, which may be used by third parties to challenge patent claims or by patent owners to supplement examination. If a patent examiner determines that the request presents a substantial new question of patentability, ex parte reexamination will proceed in much the same way that an ordinary patent application would. As such, our attorneys’ experience and skill in communicating with examiners and responding to office actions have allowed them to successfully defend and challenge patents in this context, including on appeal.
Reissue Proceedings
Fitch Even lawyers also are accomplished in developing strategies for using reissue proceedings to strengthen patents by correcting errors or adjusting claim scope prior to, or even during, litigation and licensing enforcement campaigns. Reissue applications provide opportunities to have claims reassessed in view of prior art, and if the reissue application is filed within two years of the original patent grant, the patent owner can even seek to broaden the scope of claim coverage. Fitch Even attorneys have successfully assisted numerous clients in utilizing reissue proceedings to broaden and narrow claims of issued patents in order to maximize their chances of successfully enforcing their rights against infringers.
Strategic Decision-Making in Contested Litigation
When navigating reexamination and reissue proceedings, it is critical that every strategic decision be made and each argument presented with an understanding of its potential impact in a contested litigation. Our advocacy in the USPTO leverages not only the firm’s prosecution capabilities, but also its extensive patent litigation experience. In many cases, we have been able to broaden the scope of our clients’ patents or strategically tailor claims in view of prior art in order to successfully enforce the resulting rights against competitors.
Advantages of Reissue and Reexamination Procedures
Fitch Even’s deep understanding of reissue and reexamination procedures gives our clients a powerful advantage in perfecting and defending against intellectual property rights. Whether correcting unforeseen defects in issued patents, refining the scope of existing claims, addressing newly discovered prior art, or challenging the validity of competitors’ patents, we are adept at using post-issuance mechanisms for enforcing patents and defending infringement claims.
Case Studies
Problem: Client discovered infringer who may defend an infringement on the basis of invalidity in view of new prior art or may contest the scope of the original claim coverage.
Solution: Utilized reissue proceeding to confirm patentability of several original claims over new prior art and obtain amended claims as well.
Result: Infringer changed product.
Client: Leading Producer of Pasteurized Liquid Eggs
Problem: Our client was engaged in protracted litigation with a competitor over patents directed to ultra-high temperature pasteurization of liquid eggs. Although strong grounds existed for defending the client’s product and manufacturing process, the inherent uncertainty of litigation created risk to an expanding business.
Solution: Fitch Even worked closely with the client’s in-house team of legal, business, and technical representatives to execute a multifaceted strategy for defeating the legal threat with minimal risk to the business. A cross-functional team of litigators and attorneys experienced in post-grant proceedings challenged the four patents both in the lawsuit and in reexamination proceedings pursued in the U.S. Patent and Trademark Office (USPTO). Armed with insights about the scope of patent protection that might ultimately arise from the USPTO proceedings, we also counseled the client’s technical team regarding options for modifying the original process to further reduce the threat of infringement.
Result: The scope of the patents was narrowed by the USPTO. The client implemented the new process when the reexamined patents issued, with no loss in product quality or customer satisfaction. Fitch Even then defended the new process in a six-week jury trial, obtaining a verdict of non-infringement, which was affirmed by the Federal Circuit. An integrated strategy involving a range of legal and procedural options was successfully executed to resolve a complex IP dispute and eliminate a threat to the client’s pasteurized refrigerated liquid egg business.
