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Trial Lawyer's Notebook:
Arguing Out of Both Sides of Your Mouth

By Tony Zeuli of Merchant & Gould

Tony Zeuli is a trial lawyer specializing in patent and trademark litigation with the IP firm Merchant & Gould. He also has considerable experience before the Court of Appeals for the Federal Circuit. Tony has given several presentations and published numerous articles on intellectual property litigation, especially patent claim construction. His articles have also appeared in The Federal Lawyer and Bench & Bar. Prior to joining Merchant & Gould, Tony was a physics engineer at Argonne National Laboratory, where he was involved in the study of nuclear physics. Mr. Zeuli can be reached at 612.371.5208, or by email at, or by visiting his web site at

In the last thirty days, I had the pleasure of arguing both sides of the exact same issue, whether to stay litigation in favor of patent reexamination, in different cases but in the same courthouse. The experience allowed me to focus on what really differentiated the two positions, ways to use the two arguments to help each other, and some traps to avoid.

1. Facts. Certainly the facts play a major role in whether you and your client will win or lose any given motion. However, presentation (dare I say "spin") of those facts can make a big difference too. For example, the U.S. PTO publishes statistics on reexaminations that are cited in every motion to stay litigation during a reexamination. But those facts can be presented very differently (and credibly) depending on which side of the argument you find yourself. As the party seeking a stay, you can argue that the PTO is almost guaranteed to grant your client's reexamination request because the statistics show that 92% of all requests for reexamination are granted. If you are opposing the stay, you can argue that the granting of a request for reexamination is common, almost a formality, and says nothing about the strength of your opponent's invalidity arguments. Another example from these same statistics is the probability of success. The party seeking the stay can point out that in 74% of all exparte reexaminations, all or some of the claim...

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