Patents Post-Grant: Court Confused by Patent Reexamination Results

Patents Post-Grant: Court Confused by Patent Reexamination Results

Stay of California Litigation Extended to Await USPTO Clarification

Typically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to move forward with the litigation. For example, where claims are confirmed/allowed, a judge is likely to consider lifting the stay.

Recently, in Cellectricon AB and Gyros AB v. Fluxion Biosciences Inc. (NDCA) a status report was provided to the juge noting the progress of four patent reexamination proceedings corresponding to the patents-in-suit. (7,470,518; 7,390,650; 7,563,614; and 5,376,252) The '252 was subject to ex parte patent reexamination and recently concluded with its claims being confirmed, the other three patents were subjected to inter partes patent reexaminations that are still in progress. In one of these three cases claims were also confirmed by the examiner, but subject to appeal to the BPAI. Based on the positive developments, the plaintiff patentee sought to lift the stay. However, in determining whether or not to lift the stay, the judge was troubled  by the seemingly inconsistent inter partes patent reexamination results.

Two of the three patents ininter partes patent reexaminations were related, one was the parent of the other. Both patents included the same claim language, and were rejected based upon the same prior art reference. Yet, the parent was allowed over the reference, while the child was not, the court pointed out this seeming inconsistency, noting: (full decision here)

The PTO has initially rejected the '518 patent claims while simultaneously upholding the reexamined '614 patent claims. Notably, the '614 patent is the parent of the '518 patent, and they share a common specification. Both patents also share a claim limitation requiring application of fluids through three or more outlets. In the '518 Office Action, the examiners determined that the U.S. Patent Publication No.2002/0182627 by Wang et al. ("Wang") anticipates the claims at issue because Wang discloses "multiple reagent channels feeding the portion of the channel where the biosensor is located." Dkt. No. 131-2 at 9. Nine days later, the same examiners issued an Office Action in the '614 patent reexamination. But this time, the examiners confirmed the validity of the '614 patent claims, noting that "[w]hile Wang does appear to teach sequential application of multiple fluids through a single outlet, Wang does not clearly teach or suggest application through 3 or more outlets . . . ." Dkt. No. 120-3 at 5. In other words, the examiners appear to reach conflicting conclusions as to whether the Wang prior art reference discloses "multiple outlets." The parties note that briefing and Office Actions in 2011 should clarify the inconsistency. Although the court is generally reluctant to stay a case because of the potential delay in obtaining a final resolution from the PTO or the Federal Circuit, here, the court finds that there is a legitimate basis for temporarily staying the case to see how the reexamination process will resolve the apparent conflict.

The stay was lifted as to the '252 Patent, the court will monitor the progress of the inter partes cases further before lifting the stay with respect to those patents.

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  • 05-18-2011

hai my result