The Interview: A Major Benefit (Pitfall) of Ex Parte Reexamination for Plaintiffs (Defendants) in Litigations

In re Phoenix Licensing LLC, MDL DOCKET NO. 08-1910-MHM, UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA, 2009 U.S. Dist. LEXIS 17525, February 23, 2009, Decided, February 24, 2009

Patent 5,987,434

Reexam 90/008,900

This case illustrates the important difference between ex parte reexaminations and inter partes reexaminations during litigation, namely the availability of interviews with the Examiner. In ex parte reexam 90/008,900, the first office action rejected all 160 claims. The patent owner then had an interview with the Examiner, which appears to have been a persuasive. The next official action confirmed all 160 claims, unamended, with the Examiner quoting the distinctions made by the patent owner in the reasons for allowance.

The reexam was discussed in a motion to stay, which was not moot because other reexams of asserted patents were still pending. The fact that the '434 patent was no longer subject to reexam may have tipped the decision, because not all issues would be resolved in reexam, and the court denied the motion for stay.