By Jennifer C. Bailey
A defendant in patent litigation faces sizable risks in terms of not only an injunction and infringement
damages
but also in the expense of the litigation. Litigation expense is often the most pressing concern for the
defendant
at the start of the litigation. Unfortunately, in circumstances where there is a significant amount at stake,
settlement options are often scarce, especially at the beginning of the litigation. Consequently, the
defendant
is forced to spend thousands of dollars in attorneys' fees before it has any negotiating leverage in the
litigation.
Reexaminations offer a way to change the game and position the defendant as the aggressor - as long
as strategic
analysis and care are taken. This article presents several important, but not as often discussed,
considerations
that should be weighed when evaluating whether to request reexamination.
I. Brief Explanation of Inter Partes vs. Ex Parte
Reexamination
There are two types of reexaminations: inter partes reexamination,2
which allows the third-party requester to participate in the reexamination process
conducted by the Patent
Office; and ex parte reexamination,3 which
is solely conducted between the Patent Off...
