Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?

Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?

As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I), I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis.  For example, these arguments relate to inequitable conduct, litigation infringement positions, and 112 issues of original claims.  However, in the case of reexamination concurrent with litigation, there is a clear tactical advantage to including such argumentation as a litigation tactic. 

In other words, the Office may be, unknowingly, encouraging this behavior. The reason being, while much of reexamination is not admissible (see our four part series on this topic) as evidence at trial, when seeking a stay of a concurrent litigation, Office communications will be thoroughly reviewed. 

For example, in a recent reexamination concurrent with litigation that was stayed, the requestor attacked the original patent claims as reciting subject matter not supported by the specification.  Read the rest of this entry »