Kenexa BrassRing Inc. v. Taleo Corporation - 1:2007cv00521 ... (Feb 18, 2009)
The court warned Kenexa that it would consider amendments in the inter partes reexaminations admissions that would cut against Kenexa’s denial of invalidity.
"The court considers amendments and revisions to claims on reexamination to be admissions regarding validity. Should plaintiff take an inconsistent position (to its litigation position) and revise its claims during reexamination, the court will consider the scope and effect of any such admission on an appropriate motion."
Prosecution histories have been subject to hearsay arguments in the past. Is this lessened because two of the parties are in front of the court? Should the USPTO’s rejections be subject to hearsay objections?
On the more limited note of prosecution bars placed in many protective orders, the court reiterated that reexams are only about the claims and the prior art - they don't deal with infringement. "Because reexamination involves only the patent and the prior art, defendant's confidential information is ‘basically irrelevant to the reexamination.’ See Hochstein v. Microsoft Corporation, Civ. A. No. 04-73071, 2008 WL 4387594 (E.D. Mich. Sept. 24, 2008)."
The court decided that a prosecution bar would not limit participation - by either party or its attorneys - in a co-pending inter partes reexamination.
Decision: http://www.ded.uscourts.gov/SLR/Opinions/Feb2009/07-521.pdf
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