Reexamination Practice with
`Concurrent District Court
`Litigation or Section 337 USITC
`Investigations
`
`Robert Greene Sterne, Jon E. Wright, Lori
`A. Gordon & Byron L. Pickard
`
`

`
`Reexamination Practice with Concurrent District Court Litigation
`or Section 337 USITC Investigations
`
`By Robert Greene Sterne, Jon E. Wright, Lori A. Gordon & Byron L. Pickard1
`
`Authors' Note
`
`Patent reexamination was first selected as a topic for presentation at the Sedona Patent
`Litigation Conference in 2006. Version 1 of this paper was first published as part of that
`conference. The Sedona Patent Litigation Conferences in 2007, 2008, 2009 and 2010 each
`addressed reexamination and concurrent patent litigation, and subsequent versions of this paper
`accompanied those Sedona dialogues. Other versions accompanied presentations made at ACPC,
`IPO and PLI Conferences. Now in Version XII, it will accompany the Sedona dialogue on this
`topic that will take place on October 13, 2011, at the Sedona Patent Litigation Conference XII
`(2011).2 In all versions, the authors address current procedure, process, and cutting-edge topics in
`reexamination practice and concurrent litigation. This paper subscribes to a neutral Swiss
`approach of presenting all sides of an issue and does not advocate for any particular view so that
`discussion may ensue. Many have provided comments and information for this article, including
`judges, senior officials from the PTO, Congressional staffers, patent owners, patent litigators,
`patent prosecutors, academics, bloggers and interested members of the public. Moreover, the
`authors devote substantial portions of their practices to reexaminations on behalf of patent owners
`and third party requesters and are on the editorial board of the foremost internet site on
`reexamination, The Reexamination Center (www.reexamcenter.com). However, the views
`expressed herein are for purposes of dialogue and do not necessarily reflect the individual views
`of the authors.
`
`
`1 Version 12. Copyright 2011 by The Sedona Conference® and Sterne, Kessler, Goldstein & Fox
`P.L.L.C., (SKGF). All Rights Reserved.
`2 http://www.thesedonaconference.org/conferences/20111013
`
`1
`
`

`
`I.
`II.
`
`III.
`
`IV.
`
`E.
`F.
`G.
`H.
`I.
`J.
`K.
`
`Table of Contents
`Introduction ......................................................................................................................... 4
`Hot Topics and New Developments .................................................................................... 6
`A.
`Impact of the America Invents Act on Post-Grant Proceedings ............................. 6
`B.
`Broadest Reasonable Interpretation after Suitco Surface and NTP ........................ 7
`C.
`The Impact of Therasense on Reexamination Practice .......................................... 9
`D.
`Uniloc’s Potential Impact on Patent Reexamination and the AIA’s
`Post Grant Review and Inter Partes Review Proceedings .................................... 11
`Post-NIRC Reexamination Practice ..................................................................... 11
`Discovery of Reexamination Counsel .................................................................. 12
`Reexamination Pendency ..................................................................................... 13
`Litigation Stays .................................................................................................... 16
`Protective Orders .................................................................................................. 17
`Substantial New Questions of Patentability ......................................................... 18
`Multiple PTO Proceedings Involving the Same Patent - Merger and
`its Impact on Reexamination Proceedings ........................................................... 20
`Appeals of Inter Partes Reexaminations to BPAI and Federal Circuit ................. 22
`L.
`Impact of Reexamination on Remedies ................................................................ 24
`M.
`Impact of Reexamination and Court Decisions on Stock Price ............................ 26
`N.
`Impact of Settlement Agreements on Inter Partes Reexamination ....................... 29
`O.
`'''Impact of Reexamination on Willfulness. .......................................................... 29
`P.
`Retained Reexamination Experts ......................................................................... 30
`Q.
`The Parallel Universes Examined ..................................................................................... 31
`A.
`Scope of Proceedings ........................................................................................... 32
`B.
`Standard of Review .............................................................................................. 32
`C.
`Claim Construction .............................................................................................. 33
`D.
`Decision Makers ................................................................................................... 34
`E.
`District Court v. Central Reexamination Unit ...................................................... 34
`F.
`Cumulative Effect ................................................................................................ 34
`Reexamination Strategy Considerations When Litigation is Threatened or
`Pending .............................................................................................................................. 35
`A.
`Reexamination Pendency ..................................................................................... 35
`1.
`Pendency before the CRU ....................................................................... 35
`2.
`Pendency before the BPAI ...................................................................... 37
`3.
`Pendency conclusion ............................................................................... 39
`Settlement ............................................................................................................. 39
`
`B.
`
`2
`
`

`
`C.
`D.
`
`E.
`F.
`G.
`H.
`I.
`J.
`
`Litigation Stays .................................................................................................... 40
`Protective Orders .................................................................................................. 43
`1.
`Scope of the Duty of Disclosure in a Reexamination
`Proceeding ............................................................................................................ 43
`2.
`Considerations for Crafting a Protective Order ....................................... 44
`3.
`Handling Conflicting Duties ................................................................... 45
`4.
`Submission of Evidence Supporting Patentability .................................. 46
`Impact on Trial ..................................................................................................... 46
`Damages ............................................................................................................... 47
`Potential risks for accused infringers ................................................................... 49
`Timing of Reexamination Requests – When to File? ........................................... 49
`Multiple Ex Parte Reexamination Requests ......................................................... 51
`Additional Strategic Questions to Consider ......................................................... 52
`1.
`Withholding of prior art .......................................................................... 52
`2.
`Experts' independence ............................................................................. 53
`3.
`Privilege issues ........................................................................................ 53
`4.
`Fast courts versus slow courts ................................................................. 54
`5.
`Cases with multiple defendants ............................................................... 55
`6.
`The judge's perception of reexamination requests .................................. 55
`7.
`Impact on laches ...................................................................................... 56
`8.
`Duty of Disclosure .................................................................................. 56
`Basic Reexamination Practice ........................................................................................... 57
`A.
`Generally .............................................................................................................. 57
`B.
`The Request and the SNQ .................................................................................... 57
`1.
`The substantial new question ("SNQ") generally .................................... 58
`2.
`In re Swanson and the SNQ .................................................................... 59
`3.
`KSR and the SNQ ................................................................................... 59
`Impact of KSR on Reexamination Practice .......................................................... 61
`Ex Parte Reexamination ....................................................................................... 63
`Director-Initiated Ex Parte Reexamination .......................................................... 63
`Inter Partes Reexamination .................................................................................. 64
`1.
`Generally ................................................................................................. 64
`2.
`Estoppels in inter partes reexamination ................................................... 64
`3.
`Real Party in Interest ............................................................................... 65
`Mergers of Concurrent Proceedings ..................................................................... 67
`
`C.
`D.
`E.
`F.
`
`G.
`
`3
`
`V.
`
`

`
`Merger of Co-Pending Reexaminations .................................................. 67
`1.
`Merger of Co-Pending Reissue Applications and
`2.
`Reexaminations .................................................................................................... 68
`Extensions of Time ............................................................................................... 69
`H.
`Page Limits For Inter Partes Reexamination Papers ............................................ 70
`I.
`Evidence Considerations ...................................................................................... 72
`J.
`Central Reexamination Unit (CRU) Improves Quality and Reduces Pendency ............... 72
`A.
`Dedicated Examiners ............................................................................................ 72
`B.
`Interaction Between CRU and OPLA .................................................................. 73
`C.
`Practice Suggestions ............................................................................................. 73
`D.
`Recommendations That Are Circulating .............................................................. 74
`1.
`Extensions of Time .................................................................................. 74
`2.
`Page Limit Waivers ................................................................................. 74
`3.
`Adopt an "Interference-type" Approach .................................................. 75
`CRU Criticisms .................................................................................................... 75
`E.
`Practitioner Criticisms .......................................................................................... 76
`F.
`Reexamination Statistics ................................................................................................... 76
`
`VI.
`
`VII.
`
`I.
`
`Introduction
`
`This paper addresses the interplay between patent litigation before the Federal Courts or
`the United States International Trade Commission ("ITC") (collectively, "the courts") and co-
`pending reexamination proceedings involving the patent-in-suit before the United States Patent
`and Trademark Office ("PTO"). As independent arbiters of patent validity and patentability3,
`each forum poses a distinct set of challenges and risks for those challenging or defending patent
`validity. These so-called parallel universes use different rules, standards, procedures, time lines,
`and results in cases involving the same patent. High-profile cases involving reexaminations and
`co-pending litigation include NTP, Inc. v. Research in Motion, Ltd.4 (patents found to cover the
`Blackberry), TiVo v. Echostar,5 (TiVo's DVR patents), i4i v. Microsoft, (patent covering XML
`functionality), Uniloc v. Microsoft, (patent covering anti-piracy protection), Cordis v. Abbott,
`(drug eluting stents). In another well-known case, Amazon's patent covering its "one-click"
`internet shopping method was recently confirmed in reexamination.6 These high-profile cases,
`some involving highly profitable products or large damage awards, highlight the critical interplay
`between the parallel universes of the courts and the PTO.
`
`
`3 In reexamination, the PTO reviews an issued patent for unpatentability. The courts decide the
`issue of patent validity. This distinction is important. For convenience, the authorities refer to these
`distinct issues collectively as questions of validity.
`4 NTP, Inc. v. Research in Motion, Ltd., 418 F.3d. 1282, 1326 (Fed. Cir. 2005).
`5 TiVo Inc. v. Echostar, et al, 2-04cv-01 (EDTX).
`6 Reexamination No. 90/007,946 for U.S. Patent No. 5,960,411.
`
`4
`
`

`
`Two primary factors have contributed to the increased use of reexamination as an
`alternate or additional venue to challenge patent validity where district court litigation has been
`initiated. First, in 2005, the PTO streamlined reexamination by creating the Central
`Reexamination Unit ("CRU"), making it a more viable venue for post-grant validity challenges.
`The CRU's sole responsibility is handling reexaminations. The CRU's organization and
`initiatives are described more fully below. But, if the continued growth in the number of
`reexamination filings is an indication, its formation has put teeth into a process previously
`perceived as pro-patent owner and plagued by delay and uncertainty.
`
`Second, the legal landscape surrounding patent validity has been in great flux. The
`Supreme Court's 2007 decision in KSR Int'l Co. v. Teleflex, Inc. 7 dramatically changed the
`applicable standard governing determinations of a claimed invention's obviousness, articulating a
`more flexible standard than the prior teaching-suggestion-motivation standard promulgated by the
`Federal Circuit. That decision alone appears to have cast serious doubt on the validity of many
`issued patents. Further, Federal Circuit decisions including In re Translogic Tech.8 and In re
`Swanson9 dramatically impacted and illuminated the legal landscape and brought the interplay
`between the courts and the PTO into sharper focus.
`
`Patent infringement defendants and patent owners now recognize that defending patent
`validity before the CRU is a serious challenge. For this reason, reexamination filings have
`continued their rapid growth with no sign of slowing in 2010.10 The impact of a potential
`reexamination is now commonly considered by both parties in nearly every patent litigation and
`ITC investigation. For that reason, patent owners contemplating a lawsuit must have a strategy in
`place in the event the accused infringer puts the asserted patent into reexamination. Similarly,
`every patent infringement defendant should consider the benefits of reexamination as an
`additional, perhaps more favorable, and less expensive venue in which to challenge patent
`validity. Finally, district court judges and ITC administrative law judges should be aware of how
`reexamination can impact their respective proceedings.
`
`The recently enacted Leahy-Smith America Invents Act provides some entirely new
`structures and legal bases for deciding patentability questions at the USPTO. It is beyond the
`scope of this paper to fully explore the impact of the America Invents Act on patent
`reexamination, though some broad observations are provided.
`
`This paper is organized differently from a typical journal article. Section II presents hot
`topics and cutting-edge legal developments in reexamination law and practice. This first section
`presumes the reader is familiar with the use of reexamination as a viable post-grant venue for
`
`7 KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007).
`8 In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2008) (The Federal Circuit was presented
`with simultaneous appeal from BPAI and District Court on same patent. The Court decided the BPAI
`appeal first, upheld BPAI's ruling that the patent was invalid, and vacated Translogic's $85 million damages
`award from the district court.).
`9 In re Swanson, 540 F.3d. 1368 (Fed. Cir. 2008) (The Federal Circuit clarified when it is
`appropriate to base a SNQ on art previously considered by the Office.).
`10 One metric for growth is the increase in reexamination filings from one year to the next as
`demonstrated by average annual increases of 46.4% for inter partes and 6.5% for ex parte reexaminations
`from PTO fiscal year 2005 through 2009. Overall, the number of inter partes filings in 2009 was 437% of
`the number filed in 2005 and ex parte filings 126%. Straight lining the filings for fiscal year 2010 Q1-Q3
`indicates a further increase in both proceedings.
`
`5
`
`

`
`challenging patent validity. More in-depth treatment of certain of these hot topics is found in
`other parts of this paper. In Section III, we describe in more detail the parallel universes of the
`courts and the PTO. These two tribunals are substantively different in both scope and standard of
`review. Understanding the differences is vital to any strategic reexamination decision making. In
`Section IV, we present advanced reexamination strategy considerations where federal court or
`ITC litigation is threatened or pending. Again, this section presumes basic knowledge of
`reexamination practice. We discuss timing of reexamination requests, the risk-versus-reward
`calculus, general reexamination tenets, and other, often overlooked, considerations. Finally,
`Section V is a concise discussion of important aspects of basic reexamination practice. There, we
`discuss what is required to institute a reexamination, common pitfalls, the differences between ex
`parte and inter partes reexaminations, and other concerns. Readers not familiar with basic
`reexamination practice should review this section first. Section VI provides a brief overview of
`the PTO's CRU, the current issues it faces, and recent initiatives to improve its core processes.
`Section VII, analyzes the most recent reexamination statistics, from both the CRU, and our own
`independent data collection and analysis.
`
`II.
`
`Hot Topics and New Developments
`
`The marked increase in the use of reexamination has naturally caused more frequent and
`closer evaluation of its unique procedures. In short, reexamination and its satellite issues (such as
`litigation stays, protective orders, nonobviousness evidence, duty of disclosure) remain among the
`faster developing areas of intellectual property law. Indeed, in the words of top PTO officials, it
`is still a "work in progress." We have identified a number of hot topics that are currently
`confronting parties finding themselves in a parallel universe. These hot topics were selected and
`are discussed with special attention to the perspective of the judges who manage the interface
`between the parallel universes. Our hot topics include:
`
`(A) Impact of the America Invents Act on Post-Grant Proceedings
`(B) Broadest Reasonable Interpretation after Suitco Surface and NTP
`(C) The Impact of Therasense on Reexamination Practice
`(D) Uniloc’s Potential Impact on Patent Reexamination and the AIA’s Post Grant Review
`and Inter Partes Review Proceedings
`(E) Post-NIRC Reexamination Practice
`(F) Depositions of Reexamination Counsel
`(G) Reexamination Pendency
`(H) Litigation Stays
`(I) Protective Orders
`(J) Substantial New Questions of Patentability
`(K) Multiple PTO Proceedings Involving the Same Patent
`(L) Appeals of Inter Partes Reexaminations to BPAI and Federal Circuit
`(M) Impact of Reexamination on Remedies
`(N) Impact of Reexamination and Court Decisions on Stock Price
`(O) Impact of Settlement Agreements on Inter Partes Reexamination
`(P) Impact of Reexaminations on Willfulness and Inequitable Conduct, and
`(Q) Retained Reexamination Experts
`
`A.
`
`Impact of the America Invents Act on Post-Grant Proceedings
`
`President Obama signed the Leahy-Smith America Invents Act ("AIA") into law on
`September 16, 2011. One major aim of the reform legislation was to establish new proceedings
`for reviewing the validity of issued U.S. patents. The new AIA sections provide some entirely
`
`6
`
`

`
`new structures and legal bases for deciding patentability questions at the USPTO. Specifically,
`the new grounds include post-grant review ("PGR"), inter partes review ("IPR") and
`supplemental examination ("SE").
`
`PGR provides an initial nine-month window after issuance for third parties to challenge
`the validity of an issued patent on broad grounds, including prior use or sale. IPR will supplant
`inter partes reexamination. Validity challenges in IPR may be based only on revised §§ 102 and
`103, and only on the basis of prior art patents and printed publications. The IPR window opens
`nine months after issuance, or after completion of a previously commenced PGR proceeding. SE
`serves as a vehicle for patent owners to clear up or correct any inadvertent or even negligent
`errors in prior prosecution that could have previously led to allegations of inequitable conduct.
`SE cannot, however, be used to correct fraud on the PTO. Original ex parte reexamination
`remains unchanged.
`
`It is beyond the scope of this paper to fully explore the impact of the America Invents Act
`on patent reexamination. We feel some broad observations are, however, appropriate. Current
`patent reexaminations are, by statute, generally conducted according to the provisions established
`for initial ex parte examination of patent applications. See 35 U.S.C. §§ 305 and 314(a). The
`new PGR and IPR proceedings, on the other hand, will be conducted by the newly formed Patent
`Trial and Appeal Board ("PTAB"). This means that those proceedings will likely be more akin to
`current interferences, where both parties engage in some sort of motions practice that is followed
`by a hearing stage. Moreover, the AIA does not require PGR and IPR to be done with "special
`dispatch," as with current reexamination practice. Rather, it sets an explicit time limit of one year
`for a final PTAB decision, which may be extended to 18 months for good cause shown. As with
`most legislation, the devil will be in the details with respect to how the AIA is implemented. We
`will monitor closely as the PTO formulates its rules for carrying out PGR and IPR proceedings.
`
`As a final matter, the AIA does have an immediate impact on at least one important
`aspect of inter partes reexamination. Specifically, the Act immediately changes the threshold
`requirement for initiation from whether the request raises a "substantial new question of
`patentability" to whether "the information presented in the request shows that there is a
`reasonable likelihood that the requester would prevail with respect to at least 1 of the claims
`challenged in the request." This should, in theory, raise the bar for initiation of inter partes
`reexamination over the next year and foreclose the possibility of a first action that immediately
`closes prosecution. Previously, the "substantial new question of patentability" threshold was not
`necessarily synonymous with invalid claims. That anomaly, which resulted in appeals to the
`Board by the Requester where no claim was ever rejected, no longer exists.
`
`B.
`
`Broadest Reasonable Interpretation after Suitco Surface and NTP
`
`Under current precedent, the PTO must give claim terms their broadest reasonable
`construction, consistent with the specification. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004) ("Absent claim language carrying a narrow meaning, the PTO should only limit the claim
`based on the specification or prosecution history when those sources expressly disclaim the
`broader definition."). The underlying basis for this canon of construction is the fact that
`applicants and patent owner's in reexamination can amend claims. But some practitioners believe
`the PTO takes this guidance too far, often construing claims with little reference at all to the
`accompanying specification. This is especially true in the context of patent reexamination, where
`practical realities such as completed Markman hearings and intervening rights often prevent
`patent owners from amending claims. Over the past two years, the Federal Circuit has in some
`cases reigned in the PTO's "broadest reasonable construction" rubric.
`
`7
`
`

`
`For instance, in In re Suitco Surface, 603 F.3d 1255, 1259 (Fed. Cir. 2010), the Federal
`Circuit warned the PTO that the construction cannot be divorced from the specification and the
`record evidence. Specifically, the Court stated that "[t]he broadest-construction rubric coupled
`with the term 'comprising' does not give the PTO an unfettered license to interpret claims to
`embrace anything remotely related to the claimed invention. Rather, claims should always be
`read in light of the specification and teachings in the underlying patent." Id. at 1260. As a result,
`the PTO's proffered construction failed because it unreasonably ignored the express language of
`the claims. Here, the claims required a "material for finishing the top surface of the floor." The
`PTO's proffered construction "ignore[d] this reality by allowing the finishing material to fall
`anywhere above the surface being finished regardless of whether it actually 'finishes' the surface."
`For many practitioners, Suitco was a welcome reminder to the PTO that unreasonably broad
`constructions will not be condoned.
`
`This year's decisions in the Blackberry® reexaminations were also welcome by most
`practitioners. In March 2006, Research in Motion ("RIM"), the maker of Blackberry® devices,
`paid NTP, Inc. around 612 million dollars to settle a patent infringement lawsuit. During the
`course of that hotly contested patent dispute, RIM put the eight asserted NTP patents into
`reexamination before the PTO. Those reexaminations, covering over a thousand claims, emerged
`from the U.S. Court of Appeals for the Federal Circuit on August 1, 2011, in a set of two
`precedential opinions. Like In re Suitco, the opinions are instructive to reexamination practice
`the "broadest reasonable interpretation" rubric in reexamination proceedings.
`
`In all eight patents, NTP argued that the PTO's construction of "electronic mail message"
`and "electronic mail system" was incorrect. In evaluating the claim construction arguments, the
`Court confirmed a number of basic claim construction principles by which the PTO and those
`practicing before it must follow, at least in reexamination practice:
`
`Claim construction is reviewed de novo. In re Baker Hughes, Inc., 215 F.3d
`•
`1297, 1301 (Fed. Cir. 2000); Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003).
`
`the
`interpretation consistent with
`reasonable
`The PTO uses broadest
`•
`specification, and … claim language should be read in light of the specification as it would be
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
`1364 (Fed. Cir. 2004)
`
`The Board's construction must be reasonable. In re Suitco Surface, 603 F.3d
`•
`1255, 1259-60 (Fed. Cir. 2010).
`
`The Board's construction may be confirmed if it is "legally correct." In re NTP,
`•
`Inc., Case. No. 2010-1277, slip op. at 9 (Fed. Cir. Aug. 1, 2011)
`
`To determine whether a construction is legally correct, the Court turned to
`•
`cannons of claim construction employed by district courts in patent infringement actions. Phillips
`v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005); Callicrate v. Wadsworth Mfg., Inc., 427
`F.3d 1361 (Fed. Cir. 2005); Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed.
`Cir. 2003).
`
`Again, the Court's legal framework in evaluating the Board's claim construction evinced a
`clear reliance on claim language, written description, extrinsic evidence and well-known canons
`of claim construction used by district courts. Many practitioners found this to be a welcome
`
`8
`
`

`
`addition to the growing body of case law clarifying the PTO's "broadest reasonable construction"
`rubric.
`
`C.
`
`The Impact of Therasense on Reexamination Practice
`
`A charge of inequitable conduct is often based on an allegation that the patent owner
`attempted to deceive the PTO by failing to disclose a known material reference. An actual
`finding of inequitable conduct can render a patent unenforceable.
`
`In Therasense v. Becton, Dickson & Co.,11 the Federal Circuit issued an en banc decision
`overturning the existing standard for finding inequitable conduct based on failure to disclose a
`material reference. The Therasense court adopted a relatively narrow "but for" standard for the
`materiality of an undisclosed reference, confirmed that specific intent to withhold the reference is
`required, and did away with the so-called "sliding scale" approach to weighing materiality and
`intent.
`
`In adopting a "but for" materiality standard, the court abandoned the "important to a
`reasonable examiner" standard and declined to adopt a standard analogous to the PTO's current
`broad Rule 56 standard. Under Rule 56, a prior art reference is deemed material if it presents a
`prima facie case of unpatentability alone or in combination with other information, or if it refutes
`or is inconsistent with a position the patent owner has taken with respect to patentability.12 In
`stark contrast, the Therasense court held that an omitted reference is material only "if the PTO
`would not have allowed a claim had it been aware of the undisclosed prior art" in view of all of
`the evidence before the examiner.
`
`With regard to intent, "the accused infringer must prove by clear and convincing
`evidence that the applicant knew of the reference, knew that it was material, and made a
`deliberate decision to withhold it." Importantly, the "sliding scale" approach – whereby the more
`material the reference, the less is needed for a showing of intent (and vice versa) – was abolished,
`and courts were directed to weigh the two factors independently of one another.
`
`One potential impact of the Therasense decision on reexamination practice is that a
`reexamination proceeding may become a less attractive means for an accused infringer to bolster
`a charge of inequitable conduct in a parallel proceeding. Prior to Therasense, an accused
`infringer who may not have been able to prove intent may have attempted to rely solely on the
`high materiality of an undisclosed reference under the "sliding scale" approach. To establish high
`materiality, an omitted reference can be used as the basis for a SNQ in a reexamination request.
`If the examiner is persuaded that the omitted reference forms a SNQ and then orders a
`reexamination, this will be taken as further evidence as to the materiality of the reference. Some
`characterize such a use of a SNQ finding as a litigation tactic used by the defense bar to "create"
`an inequitable conduct charge.
`
`However, after Therasense, even a finding of high materiality will not be enough for a
`finding of inequitable conduct in the absence of a finding of a "deliberate decision to withhold."
`
`
`11 Therasense v. Becton, Dickson & Co., 2011 WL 2028255 (Fed. Cir. May 25, 2011).
`12 37 C.F.R. § 1.56
`
`9
`
`

`
`In addition, the relatively low SNQ standard falls well short of the requisite "but for" materiality.
`13 Accordingly, it is possible that the use of this tactic by accused infringers may diminish.
`
`Another potential impact of the Therasense decision on reexamination practice is that it
`may alter the way the patent owners handle their duty of disclosure obligation during prosecution
`of a reexamination.
`
`It is clear that the patent owner remains under a duty of disclosure while the patent is in
`reexamination proceedings under 37 C.F.R. §§ 1.555 and 1.933. Arguably the patent owner is
`required in